EPO Clarifies Start Of Divisional Application Filing Period

This article was included in our Winter 2010 edition of Inside IP magazine.

In response to concerns raised by users, the Administrative Council of the EPO has acted to provide certainty on the nature of the “Examining Division’s first communication” as specified in Rule 36(1)(a) EPC, the date of issue of which starts a two year period within which divisional applications can be filed.

Rule 36(1)(a) EPC, which only came into force on 1 April 2010, has now been amended to specify that “[t]he applicant may file a divisional application relating to any pending earlier European patent application, provided that the divisional application is filed before the expiry of a time limit of twenty-four months from the Examining Division’s first communication under Article 94, paragraph 3, and Rule 71, paragraph 1 and 2, or Rule 71, paragraph 3, in respect of the earliest application for which a communication has been issued”.  As such, the rule now specifies that the relevant “first communication” is the first issued of an examination report or a notice of intention to grant, as they are more commonly known.  It should be noted that the European application must be pending in order for the divisional application to be validly filed.  The article by Olivia Johansson which can be found on page 8 of this newsletter discusses recent case law relating to whether refused applications are pending.

Although amended Rule 36 merely specifies what was widely understood to be the meaning of the “Examining Division’s first communication”, the amendment to the Implementing Regulations does end speculation that issue of a communication pursuant to Rule 161/162 EPC (which is, in actual fact, the first-issued communication from the Examining Division in respect of Euro-PCT applications) could trigger the start of the twenty-four month period.  Such communications may require a response by the applicant to substantive objections, but they are not strictly part of the examination procedure.

This amendment was announced in a Decision of the Administrative Council of 26 October 2010 (CA/D 16/10) and entered into force on the same day.  The decision can be found on the EPO’s website.

Oliver Anderson 29 Nov 2010

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