O/030/20 – Is Filing a Divisional Application After the Parent Application Has Been Refused in a Hearing, but Before Written Refusal, Valid?

This recent decision issued at the UKIPO relates to a divisional application filed by Motorola in the time period between an oral hearing on the parent application and issuance of the written decision.  While the IPO accepted such a divisional on this occasion, it was recommended to resort to other means such as filing auxiliary requests instead.

The invention in question related to a system and a method for analysing various input data to predict the likely route of a fugitive and then outputting directions to direct pursuit assets to capture the fugitive at a determined capture location.  Unfortunately for the applicant, the divisional application was refused on grounds of excluded subject matter, similar to the parent application, after a hearing (please refer to O/375/19 in our Hearings Digest 2019).

However, this decision raised a number of interesting points for consideration — whether an earlier decision on the parent application had created an estoppel in respect of the divisional, and whether the filing of the divisional in the window between the hearing on the parent and the decision on the parent constituted an abuse of process.

The hearing officer’s view was that it is generally accepted that decisions of the Comptroller can give rise to estoppel.  However, the hearing officer stated that the question of whether a decision of a tribunal, such as the Comptroller, in an ex-parte procedure can give rise to any form of estoppel is not one that seems to have been considered in any real depth.  It was therefore concluded that without a more thorough consideration at the hearing, and with outstanding questions on the issue of estoppel in an ex-parte hearing, it would be inappropriate to deny the applicant consideration of the divisional application for reasons of a possible estoppel.  Therefore, Motorola was given a fair chance to put their case forward with respect to the divisional application.

Another important question that the hearing officer considered whether or not “the behaviour of the applicant constituted an abuse of process?” While the hearing officer stated that it would have been preferable if the applicant had presented the claims of the divisional as alternative or auxiliary claims at the hearing on the parent, the act was not considered so abusive that it would justify refusing to consider the claims on the divisional.  The officer however offered guidance to other applicants in similar situation.  He said “[s]hould other applicants however seek to exploit that window between hearing and decision by filing further divisionals, and it is feasible for that to happen multiple times for the same parent, then the IPO will need to consider in more depth whether any estoppel arises or whether the behaviour of the applicant does amount to an abuse of process that would justify a stronger response.”

This case gave rise to two important questions in relation to divisional applications filed under unusual circumstances.  While the IPO took a rather liberal stance on this occasion, it will be interesting to see how the situation changes if more such cases arise before them.  To be safe, it is advisable to file any divisional application before a hearing on the parent application.  Alternatively, as advised by the hearing officer, consider filing such claims in an auxiliary request during the parent application proceedings.