Insights: Two year deadline for filing Divisional European Applications repealed

In October 2010, amidst some controversy, the Administrative Council of the EPO introduced a 2 year time limit for the filing of Divisional applications. The time limit is based upon the date of a first examination report or a new lack of unity objection. The Administrative Council was concerned to prevent the filing of so-called abusive Divisional applications, by applicants seeking merely to maintain pending rights for as long as possible.

Following consultation with interested parties earlier this year, the Administrative Council met on 16 October 2013 and decided – as had been previously rumoured – to repeal that two year deadline entirely. The EPO has formally announced the decision. Thus, from 1 April 2014, it will become possible to file Divisional applications at any time whilst the parent application remains pending. Cascaded Divisional applications – that is, Divisional applications filed out of (pending) Divisional applications – will remain possible.

Although the EPO has not yet published the specific amendments proposed to the EPC Rules, we understand that there will be no transitional provisions. The consequence is that there are currently pending applications, out of which it is not currently possible to file a Divisional application (because the 2 year period has now expired). However, if such an application remains pending on 1 April 2014, then it will again be possible to file a Divisional application out of it.

The EPO has also announced that the filing fee for European Divisional applications will increase progressively after the first generation. In other words, the cost of filing a Divisional application out of an application that is itself divided from a parent application will be increased. Subsequent generations will attract still higher official fees, up to a ceiling. The quantum of these additional filing fees has not yet been set.

In consequence, we recommend that pending cases be reviewed in the near future to determine whether a Divisional application might be of interest. Where the present 2 year period has expired, and particularly where the case may have recently been allowed (but not yet granted), please speak to your usual Boult Wade Tennant advisor as there are steps that might be taken to defer the grant of the application until next April.

Also, where we have prepared a report for you (for example, a freedom to operate (FTO) or other non infringement opinion), and where that report has indicated that the Divisional filing period for a particular application has expired, it may be desirable for that conclusion to be revisited next April. Again, please speak to your usual advisor about this.

For further information please contact Alex Frost or your usual Boult Wade Tennant adviser.