March 2009
For some time there have been rumours that the European Patent Office (EPO) wanted to restrict the filing of divisional applications. They were viewed by the EPO as a thorn in the side of third party rights.
It is now official. At their meeting on 26 March 2009, the EPO Administrative Council concluded that the current practice of filing divisional applications is “abusive”. They have changed Rule 36 EPC, which will severely limit an applicant’s opportunities to file divisional applications.
Under present Rule 36 EPC, a divisional application can be filed at any time before grant, abandonment or withdrawal of the parent case.
The new rule will restrict this deadline in two ways:
1) If the EPO do not raise an objection of unity of invention
Any divisional application(s) can only be filed within 2 years of the first communication from the examining division;
2) If the EPO do raise an objection of unity of invention
Any divisional application(s) can only be filed within 2 years of the first communication from the EPO (not when acting as the International Search Authority) which identifies that there is more than one invention.
The new rule will come into force on 1 April 2010. There will be a 6 month grace period, until 1 October 2010, for filing divisional applications outside the new two year periods.
Here are some examples of how the new rule will work:
An applicant can voluntarily file a first divisional from an original parent application, and a second divisional, from the first divisional. However both divisionals must be filed in the 2 years after the first examining division communication on the original parent application.
If the EPO identifies 3 different inventions in a search report on an original application, then the applicant must file divisional applications to each of the 2 additional inventions within two years of that search report. However, if one of those divisionals provokes a new lack of unity objection, then the new objection starts a fresh 2 year term for filing divisional applications for the newly-identified inventions.
There will be clarifications to this proposed system in the year before the new rule takes effect, and we will inform you as soon as we know of them. In the meantime, if you have any specific questions on how the new system will operate, please let us know.
Similarly, if you would like us to review your portfolio, and recommend any European applications which might benefit from the filing of divisionals, then please feel free to contact us.