Wednesday 23 October 2013

Divisional applications may again be filed as long as the parent application is pending

On 16 October 2013 the European Patent Office's Administrative Council adopted another amendment to Rule 36 of the Implementing Regulations to the EPC, dealing with the requirements for filing divisional applications. The purpose of this revision is to alter the existing approach of requirements governing divisional patent applications.

The EPO has amended Rules 36 and 135 of the Implementing Regulations to the EPC to enable divisional applications to be filed while the parent application is still pending. That is, the revision reverts back to the wording of Rule 36 as it stood before the current wording that took effect on 1 April 2010. This was not the only amendment adopted, however. An additional fee has been established as part of the filing fee for divisional applications in the case of divisionals of divisional applications. Accordingly, Rule 38 of the Implementing Regulations to the EPC has also been amended.

The intent behind the different revisions to Rule 36 has been to restrict the use of divisional applications as a strategy to extend the life of patent applications that looked as if they were going to be refused. The EPO's goal has been to afford certainty to third parties and decrease the number of divisionals filed, thereby reducing the additional workload they represented.

In the amended version currently in force, the EPO specified 24 months as a time limit for filing divisional applications. Specifically, it was stipulated that divisional applications could be filed:

  • within 24 months of the Examining Division's first communication in respect of the earliest application for which a communication had been issued, or
  • within 24 months of any communication in which the Examining Division had objected that the earlier application did not meet the requirements of unity of invention (Article 82 EPC), provided that this objection was being notified for the first time.

However, the outcome has not been as expected. Numbers of divisional applications have actually grown, because applicants have preferred to file divisionals before the end of the 24-month time limit, as a precaution. Not only that, but interpretation of the current wording of Rule 36 is not straightforward; in fact, it was revised further a few months before it was to enter into force. There have, as well, been numerous complaints from applicants who feel that the current wording of Rule 36 goes against their interests. Filings of successive divisionals from the initial application remains possible and is another aspect that has not improved. Thus, Rule 36, as it currently stands, has been more of a problem than a solution.

With this new revision the EPO has decided to try a new approach to solving the initial problem, i.e., limiting use of divisionals as a means of indefinitely extending the life of patent applications.

Under the new approach, the 24-month time limit has been rescinded, hence divisional applications may once more be filed as long as the parent application is still pending. However, an extra fee has been added on top of the filing fee, perhaps a simpler and more direct way to deter applicants who might be interested in filing successive divisionals.

The amount of the extra fee remains has yet to be decided, and discussions are planned, but the idea is to increase the fee progressively for each generation of divisional applications filed. The amendment provides that the first divisional application filed will not be subject to an additional fee.

This new revision of Rule 36 will enter into force on 1 April 2014 and will be applied to divisional applications filed on or after that date.

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