The following case law concerns the situation regarding divisional applications filed before 1 April 2009, where designation fees had to be paid for each designation of a contracting state (see Art. 2(2), item 3 RFees).

In G 4/98 (OJ 2001, 131) the Enlarged Board of Appeal found that the wording of Art. 78(2) and Art. 79(2) EPC 1973 and the European patent system clearly indicated that up to the due date for payment of the designation fees, the designations had full effect. Only if the designation fees were not paid in due time would the designations not have any effect with respect to acts to be performed after that date, such as the filing of a divisional application. Retroactivity of the effects of non‑payment of designation fees would occur only where the EPC explicitly provided for it, i.e. in the case of provisional protection (Art. 67(4) EPC 1973). The applicant might designate all contracting states designated in the parent application in the divisional application, and he might proceed with all of them even if in respect of the parent application he later paid only some or no designation fees. This was in line with the fact that the procedure concerning the divisional application was in principle independent from the procedure concerning the parent application and that the divisional application was treated as a new application (G 4/98 supersedes the decision in J 22/95, OJ 1998, 569).

In J 40/03 the applicant sought to designate a contracting state in a divisional application which was designated in the parent application as filed but for which no designation fee had been paid. The board confirmed the established case law (G 4/98, OJ 2001, 131; J 25/88, OJ 1989, 486; J 19/96) on this issue. The designations in a parent application, all or some of which may be designated in a divisional application, were those in the parent at the time of filing of the divisional application. If the time limit for paying the designation fees had expired and designation fees had been paid for fewer states than those originally designated in the parent, then the divisional could only designate some or all of those states which remained designated in the parent.

In J 1/05 the applicant had paid the designation fee only in respect of one contracting state. After the time limit for the payment of designation fees for the parent application had expired, he filed a divisional application designating all the EPC contracting states. The board confirmed G 4/98 (OJ 2001, 131), in which it was held that only such states as were already designated in the parent application could be designated in a divisional application, or, in the event that the designation fee for the parent application had not been paid, those for which the normal period for payment of the designation fee had not yet expired. After expiry of that period, the provisional designation of any other contracting states was deemed to be withdrawn and the right to designate further states was lost. Moreover, no right to the valid designation of new states in the divisional application could be derived from the fact that an appeal was pending against a notification of a loss of rights under R. 69 (2) EPC 1973 (now R. 112 (2) EPC) in relation to the parent application.