New EPO rules for divisional applications

New rules for filing of divisional applications have noticeable consequences for patent applicants with the European Patent Office, EPO. As of the 1st of April 2010, the EPO imposes restrictions as to the point in time in which a divisional application may validly be filed

Current rules regarding divisional patent applications
Filing of divisional patent applications is a useful tool for a patent applicant as a divisional application is an independent application which may be filed based on a mother application if the examination of this mother application turns out to lead to an unfavourable outcome for the patent applicant.  By filing a divisional application, a new, independent examination is started in respect of the divisional patent application. Filing of such an application in practice thus results in the patent applicant buying himself more examination time with the authority as a divisional application at the time of filing may have the same content as the mother application.   

With the current rules, it is possible for applicants of a European patent to file a divisional application as long as the mother application is still pending, i.e. until the mother application has been granted, rejected or withdrawn.  

Under the existing rules, it has been standard practice for patent applicants - as a precautionary measure - to file a divisional patent application immediately ahead of actions which could result in a patent application being rejected. It has thus been popular to file a divisional application on the day before oral proceedings are being held at the EPO. In case the oral proceedings should end with a rejection of the patent application, the applicant in question has really not lost any rights as then he has a pending divisional application which could have the same content as the originally filed application, and which subsequently is prosecuted in its own course of examination. 

New rules regarding divisional patent applications
Caused by the fact that EPO regards it as being abuse of procedure to file a divisional patent application solely to buy oneself more examination time, and that such an action can keep third party in uncertainty for unnecessarily long time, as well as the fact that EPO in general is interested in making examination more efficient, the Administrative Council with the EPO has decided to change the rules for filing of divisional patent applications.   

The new rules thus stipulate that a divisional patent application can be filed based on an earlier, pending application if the divisional application is filed within a period of 24 months from the time of issuance of the first communication from the Examining Division in respect of the earliest application (i.e. either the mother application or the first filed application in case of a series of successive divisional applications) for which a communication has been issued (New Rule 36(1) EPC).  

The exception from this rule is that a divisional patent application, moreover, can be filed based on a pending, earlier patent application within a period of 24 months from the time of issuance of a communication in which the Examining Division objects that the application does not meet the requirement of unity of invention, provided that this objection is stated for the first time (New Rule 36(2) EPC).  

The new rules concerning filing of divisional patent applications become effective from the 1^st of April 2010, and the rules apply to divisional patent applications which are filed on or after this date.  

Consequence of the new rules
With the new rules, the EPO imposes limitations as to the point in time at which a divisional application may validly be filed. As it is not unusual that the application phase for a complicated European patent application may last six years or more, it is clear that the opportunity for filing a divisional patent application at a later time – as a precautionary measure when the applicant fears a rejection – is no longer relevant as in the general case such a divisional application can only be filed until 24 months from issuance of the first communication in respect of the first patent application for which a communication has been issued by the Examining Division.  

Consequently, the flexibility for the patent applicant in terms of being able to buy himself more examination time is thus significantly reduced with the implementation of the new rules.  

The EPO’s new rules for filing of divisional patent applications accordingly require heightened awareness with regard to preparation of European patent applications and with regard to monitoring time limits for filing of divisional applications.   

Patentgruppen A/S will prepare recommended strategies for handling of the new rules. Please keep up with our recommended strategies on our homepage.