Update – EPO introduces stricter time limits on divisional applications

On 1 April 2010, a new rule to the European Patent convention comes into effect[1] which imposes a stricter time limit on the deadline for filing divisional applications. This new rule will apply to all applications pending on that date. Boult Wade Tennant therefore strongly recommends an early review of existing applications to determine if one or more divisional applications might be required.  

This new rule is part of the European Patent Office’s “Raising the Bar” initiative which has the goal of producing better quality patents. For more on this initiative, please see our companion bulletins “European Patent Office announces rule changes to ‘Raise the Bar’” and “European Patent Office introduces mandatory accelerated examination”.

Divisional applications are intended to allow an applicant to claim subject matter disclosed but either not claimed in, or claimed initially but then removed from, a parent application. They may in particular be filed if the application is found to relate to two or more different inventions and receives a disunity of invention objection or, even without a specific objection from the EPO, if the applicant simply wishes to pursue slightly different protection for an invention. Also, any application may be divided before grant, whether that application is the original parent or is itself a subsequent divisional. This opens up the possibility of chains of divisional applications being filed throughout the lifetime of a case.

New rule 36 adds that a divisional may only be filed if:

(a) the divisional application is filed before the expiry of a time limit of 24 months from the Examining Division’s first communication in respect of the earliest application for which a communication has been issued, or

(b) the divisional application is filed before the expiry of a time limit of 24 months from any communication in which the Examining Division has objected that the earlier application does not meet the requirements of Article 82 [i.e. lacks unity], provided it was raising that specific objection for the first time” (emphasis added).

It is important to note the reference to the earliest application in part (a) compared to the earlier in part (b). This means that the time limit is not reset if a new divisional is filed and that all divisional applications must normally be filed within two years of the first examination report issued on the original parent application. The time limit is only reset for a given application if a brand new unity objection is raised during examination of that application but it is not possible to guarantee that such a new unity objection can be provoked and we therefore do not recommend that applicants seek to rely upon this provision.

For new applications, the practical effect of this rule change is that applicants will have at least four years and often at least five years from the earliest priority date in which to file any divisional applications that may be required. In combination with the other rule changes discussed in our companion bulletin, “European Patent Office introduces mandatory accelerated examination”, it is likely that applicants will have a good idea of how examination of the original parent application is proceeding by that time and will be able to make an informed decision about which subject matter it would be worthwhile pursuing in a divisional. Nevertheless, this new rule does represent a marked change from existing practice such that applicants should make sure to consider the options for filing divisional application early on to avoid missing the opportunity to do so.

In future, when we receive a first examination report (which will trigger the two year period for filing divisional applications) we shall endeavour to report that due date to you. We shall also docket the due date in our Records system so that future reminders may be issued to you.

A very important aspect of the new divisional Rule is that it is retroactive. Thus the new Rule will apply to all applications that are pending at the date the Rule comes into force, and if the newly introduced time limit would have expired before 1 April 2010 or would expire within six months of that date, then any divisional applications must be filed before 1 October 2010.

If you have any pending applications for which you might be interested in pursuing a divisional application, please contact your usual adviser who will be able to confirm the deadline for doing so under these new rules.

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Boult Wade Tennant
   

[1] See the Decision of the Administrative council of 25 March 2009 amending the Implementing Regulations to the European Patent Convention (CA/D 2/09) (http://www.epo.org/patents/law/legal-texts/decisions/archive/20090325.html)

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