EPO clarifies upcoming restrictions on the division of European patent applications

This article was included in our Winter 2009/10 edition of Inside IP.

As reported previously, new provisions regarding the filing of European divisional patent applications will come into force on 1 April 2010.  The European Patent Office (EPO) has recently issued a Notice clarifying the new rules and the transitional provisions.

Under the current regulations, divisional applications can be filed at any time while the parent application remains pending.  This has allowed the division of applications long after the start of substantive examination.  Such applications are often intended to allow an applicant addressing an objection for lack of unity in the parent application by pursuing protection for a second invention in a separate application.  However, divisional applications have sometimes been used for other purposes, for instance, to pursue claims that are closely directed to a particular commercial objective or as a safeguard where the parent application is at risk of imminent rejection.  The new provisions will severely restrict the opportunity for an applicant to divide an application by limiting the time period during which divisional applications can be filed.

Under the new provisions, a divisional application can only be filed if one of the following time limits has not yet expired:

(a)    24 months from issue of the first Official Communication from the Examining Division on the earliest

application; and

(b)    24 months from a Communication from the Examining Division in which a lack of unity objection is raised for the first time.

The transitional provisions allow the filing of divisional applications on currently pending applications until 1 October 2010, regardless of whether time limits (a) and (b) will have expired by that date.

After 1 October 2010, if a divisional application is filed after time limits (a) and (b) have expired, it will not be treated as a divisional application and will lose the benefit of the parent application’s filing date.  However, it may be possible to re-establish the divisional application if it can be shown that all due care was taken to meet the relevant time limit.

In their recent notice the EPO has clarified that time limits (a) and (b) cannot be triggered by the issue of an Opinion of the Search Division.  Furthermore, while the new provisions do not preclude the division of a divisional application, in other words, a “granddaughter” application, time limit (a) is calculated from the date of issue of the first Official Communication for the original parent application.  Therefore, the filing of a divisional application cannot extend the period for filing further divisional applications based on time limit (a).

The recent notice from the EPO also states that time limit (b) can be based on an Official Communication under Article 92 EPC, a Summons to Oral Proceedings or even in a telephone discussion with a member of the Examining Division.  However, time limit (b) cannot be triggered by an objection to amendments that are considered to claim unsearched subject matter.  It should also be noted that, under incoming provisions, the Examining Division will not be obliged to admit any amendments made after substantive examination has commenced.  Consequently, an amendment that introduces plurality of invention during the examination process, and could potentially result in a new period for filing a divisional application, would be unlikely to be admitted.

We recommend that pending European Patent applications are reviewed with the new time limits in mind, to evaluate whether a divisional application might be required.  In particular, applications for which the first Official Communication was issued prior to 1 October 2008 should note the deadline for filing divisional applications of 1 October 2010 set by the transitional provisions.

We would be pleased to advise and assist you in your preparation for the new regulations.  There will also be an opportunity for you to ask questions in our IP webinar on the 12 November 2009.

The original EPO announcement of the new rule changes can be accessed via http://www.epo.org/patents/law/legal-texts/decisions/archive/20090325.html, while the most recent EPO Notice can be accessed via http://www.epo.org/patents/law/legal-texts/InformationEPO/archiveinfo/20090820.html.

Diana Pisani 05 Nov 2009

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