Following consultations with the patent community in which we submitted a response on behalf of our clients, the European Patent Office has listened to feedback and decided to revoke the 2 year deadline for filing divisional applications.
As of 01 April 2014 it will once again be possible to file divisional applications at any time as long as the parent application is still pending.
What are the rules now?
The current rules were implemented in 2010 to address duplication of proceedings and prolonging the possibility of protecting rejected subject-matter by filing divisional applications. Rule 36(EPC) dictates that divisional applications can only be filed in relation to any pending earlier application provided that they are filed before the expiry of:
“(a) a time limit of twenty-four months from the Examining Division’s first communication in respect of the earliest application for which a communication has been issued,
(b) a time limit of twenty-four months from any communication in which the Examining Division has objected that the earlier application does not meet the requirements of Article 82 EPC, provided it was raising that specific objection for the first time.”
In September this year, the Administrative Council met to discuss the current requirements for filing of divisional applications.
Owing to feedback and growing confusion over the time-limits, along with an unexpected increase in “precautionary” divisional applications filed at the end of the 24 month period even if it was not required, it was decided to amend these rules to allow divisional applications to be filed at any time as long as the parent application is still pending.
Furthermore, in order to combat the perceived problem of filing chains of divisional applications to keep one pending each time its parent was refused, the European Patent Office proposes to provide for a new additional fee as part of the filing fee in the case of a divisional application filed in respect of any earlier application which is itself a divisional application, i.e. for a divisional application of a divisional application.
When will all this happen?
The new rules (including the new fee) will take effect from 01 April 2014 and apply to any divisional applications filed on or after that date. Therefore, any twenty-four month time limit which expires on or after 01 April 2014 can effectively be ignored.
Proposed amendments to the Rule 36, 38 and 135
1. Rule 36(1) shall read as follows:
“(1) The applicant may file a divisional application relating to any pending earlier European patent application.”
2. The following paragraph 4 shall be added to Rule 38:
“(4) The Rules relating to Fees may provide for an additional fee as part of the filing fee in the case of a divisional application filed in respect of any earlier application which is itself a divisional application.”
3. Rule 135(2) shall read as follows:
“(2) Further processing shall be ruled out in respect of the periods referred to in Article 121, paragraph 4, and of the periods under Rule 6, paragraph 1, Rule 16, paragraph 1(a), Rule 31, paragraph 2, Rule 36, paragraph 2, Rule 40, paragraph 3, Rule 51, paragraphs 2 to 5, Rule 52, paragraphs 2 and 3, Rules 55, 56, 58, 59, 62a, 63, 64 and Rule 112, paragraph 2.”