The EPO’s Enlarged Board of Appeal (EBA) has just issued its long-awaited decision in respect of divisional applications which was referred under cases G1/05 and G1/06 (G3/06 having been withdrawn). Cases G1/05 and G1/06 referred a number of questions concerning the validity of divisional applications found to contain, at their actual filing date, subject-matter going beyond that of their preceding parent application. Further, the EBA had to examine whether the claims of a divisional application should fall within the scope of the claim of its parent application.

Reverting to the established practice of the EPO which has been to allow applicant the chance to remove added matter from divisional applications, so that they comply wiith Art.76(1) EPC, the Enlarged Board of Appeal concluded that :
- A divisional application which contained, at its actual filing date, subject-matter extending beyond the content of the “parent” application, can be amended subsequently so as to remove the added subject-matter.
- Such an amendment is allowable at any time, even in the case where the parent case is no longer pending.
- The same limitations apply to such amendments as to amendments in general of any non-divisional application, i.e. anything disclosed in a divisional application must be directly and unambiguously derivable from each of the preceding applications filed. Therefore:
            (a) What was claimed in the directly-preceding parent application is irrelevant, as  only the disclosure needs to be considered: the claims of a divisional application can be directed, by amendment, to some embodiments of the parent application also disclosed in the divisional application as filed but not encompassed in the claims of the divisional application as filed.
            (b) In the case of sequences of divisional applications (each having been divided out from its direct predecessor), the subject-matter of each divisional application must have been disclosed in each of the preceding applications as filed, and must still be present in each earlier direct predecessor application (i.e. must not have been unequivocally and definitely abandoned) at the time of filing of the further divisional application. Content which had been omitted on filing a divisional application higher up in the sequence of divisional applications cannot be re-introduced into that application or into a divisional application lower down the divisional application sequence.

In summary, this decision is to be welcomed as a confirmation of the practice of the EPO Examining Division to date in the treatment of divisional applications.