New EPO Rules on Divisional Applications
We have previously reported on new rules which will change the time limits for filing European divisional applications. The EPO has now issued a Notice providing more information on how the new rules will be implemented.
Under the current rules, divisional applications based on an earlier application (the “parent”) may be filed at any time while the earlier application is pending. The new rules, which will enter into force on 1 April 2010, will provide additional restrictions on the filing of divisional applications.
Under the new rules, it will only be possible to file a divisional application based on an earlier application if the earlier application is still pending and either:
· the period for voluntary division under amended Rule 36(1)(a) EPC has not expired; or
· the period for mandatory division under Rule 36(1)(b) EPC, where applicable, has not expired.
Voluntary Division
New Rule 36(1)(a) EPC provides that a divisional application may be filed on the basis of a pending earlier application 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.
This rule is intended to provide a period in which an applicant may file a divisional application of his own initiative. The divisional application may relate to any subject-matter divided out from the earlier application.
The EPO has indicated that the “ten-day rule” as provided for in Rule 126(2) EPC applies. The 24 month time limit will therefore be calculated from a deemed notification date of ten days after the actual date of the first communication.
The EPO has indicated that “Examining Division’s first communication” will be either a first examination report issued on the application or, where there are no objections to the application, the communication under Rule 71(3) EPC of the intention to grant a patent. The European search opinion will not be the “Examining Division’s first communication” because it is formally issued by the Search Division, not the Examining Division.
In the case of a sequence of European divisional applications, the 24 month time limit is to be calculated from the date on which the Examining Division’s first communication was issued for the earliest application in the sequence, for example the “grandparent” application.
Mandatory Division
Under new Rule 36(1)(b) EPC a divisional application may be filed on the basis of a pending earlier application before the expiry of a time limit of 24 months from any communication in which the Examining Division raises a non-unity objection, provided it was raising that specific objection for the first time.
This rule allows a period in which an applicant may file a divisional application after a new non-unity objection has been raised by the Examining Division on a pending application. The rule enables the applicant to file divisional applications when the new non-unity objection has been raised after expiry of the period for voluntary division, for example in a second or third examination report or even in a summons to attend oral proceedings. The rule does not apply to communications in which unity objections first raised in a previous communication from the Examining Division are merely maintained.
It is not possible for the period for mandatory division to expire earlier than the period for voluntary division. In many cases the periods will expire at the same time.
Again, the EPO has indicated that the “ten-day rule” as provided for in Rule 126(2) EPC applies. The 24 month time limit will therefore be calculated from a deemed notification date of ten days after the actual date of the relevant communication.
Transitional Provisions
The new rules on will apply to all pending European applications from 1 April 2009. However, if the time limits have expired before 1 October 2010, divisional applications may still be filed by that date.
Practical Advice for Applicants
Under the new rules it will no longer be possible for applicants to follow the general practice of deferring the filing of divisional applications until after the EPO has communicated its intention to grant a patent on a pending application. Instead, we recommend that applicants should consider their requirements for divisional applications well in advance of the end of the period for voluntary division, provided of course that a patent is not granted before then.
We expect that the practice of filing second (or subsequent) generation divisional applications will be particularly adversely affected by the new rules. We therefore recommend that, in general, applicants should file all divisional applications that may be needed before the end of the period for voluntary division.
In some cases applicants currently respond to non-unity objections on pending applications by arguing that the objections are incorrect. Although this approach may still be followed, under the new rules it may be necessary to file precautionary divisional applications before the outcome of the arguments are known, for example where the Examining Division takes a long time to respond. Proactive management of applications, including requests for accelerated examination where appropriate, will therefore be important.
There are a large number of pending applications to which the transitional provisions apply. The voluntary period for division on all of these applications will expire on 1 October 2010. We strongly recommend that applicants aim to file any divisional applications based on these applications by 1 September 2010 at the latest, to avoid the inevitable surge in applications as the actual time limit approaches.
