Last October we reported on the decision of the
Administrative Council dated October 16, 2013 amending Rule 36 of
the Implementing Regulations to the EPC and abandoning the time
limits for filing divisional applications which had been introduced
in 2009. As to the background of this amendment, reference is made
to BARDEHLE PAGENBERG IP Report 2013 Special/II. In the meantime
the Administrative Council has also amended the Rule relating to
Fees and fixed the fees foreseen in new Rule 38 (4) EPC for
divisionals from divisionals.
The situation under the revised provisions can be summarized as
1. Rule 36 (1) EPC as amended reads as follows: "The
applicant may file a divisional application relating to any pending
earlier European patent application."
The amendment enters into force on April 1, 2014, and is
applicable to divisional applications filed on or after that
2. In accordance with the Guidelines for Examination A-IV,
220.127.116.11, the following principles apply in respect of the pendency
of an application:
An application is pending up to (but not including) the date
that the European Patent Bulletin mentions the grant of the
If an application is deemed to be withdrawn, the application is
no longer pending when the non-observed time limit has expired,
unless the loss of rights is remedied by further processing or by
re-establishment of rights, as the case may be.
If an application has been refused, it remains pending if an
admissible appeal is filed. If no appeal is filed, the application
remains pending until the expiry of the time limit of two months
for filing the appeal.
3. The amendments lead to the following practical consequences
For an application pending on April 1, 2014, a divisional
application may be filed even if the presently applicable time
limits of 24 months have already lapsed. The lapse of the time
limits for filing a voluntary or obligatory divisional application
in Rule 36 (1) a) or b) EPC in its version as applicable until the
end of March 2014 has only negative consequences for an application
which is no longer pending on April 1, 2014. If a divisional
application may be needed, it might therefore be preferable to
prolong the pendency of an application.
In the communication under Rule 71 (3) EPC (intention to
grant), the applicant is given a non-extendable time limit of four
months for fulfilling the formal requirements for grant
(translation of the claims and payment of the fee for grant and
publishing). When these requirements are fulfilled, the EPO issues
the decision to grant. In this decision, the applicant is informed
of the date of publication of the grant. The time period between
fulfilling the formal requirements for grant and publication in the
Bulletin may be somewhat less than six weeks.
Thus, an applicant having recently received a Rule 71 (3)
communication and using the full time period of four months can be
sure that the mention of the grant will be published after April 1,
2014, i.e. the application will be pending on that date
and a divisional application may still be filed.
4. Pursuant to Article 2 item 1b of the Rules relating to Fees
as amended, the additional fee in the case of a divisional
application filed in respect of any earlier application which is
itself a divisional application has been fixed as follows:
Fee for a divisional application of second generation: 210
Fee for a divisional application of third generation: 420
Fee for a divisional application of fourth generation: 630
Fee for a divisional application of fifth or any subsequent
generation: 840 €
If a parent as well as a divisional application is pending, the
applicant may file a further divisional application based either on
the parent or on the divisional application. If the further
divisional is filed as a divisional from the parent application, no
additional fee pursuant to Article 2 item 1b of the Rules relating
to Fees becomes due.
Any of the above fees has to be paid in addition to the normal
The amount of this fee is until the end of March 2014:
115 € (online filing) and
200 € (no online filing).
It has been increased with effect from April 1, 2014 to:
120 € (online filing) and
210 € (no online filing).
Finally, all accumulated annuities have to be paid for a
divisional application, which were already due for the parent
application. In a typical case, the accumulated annuities for a
second or higher generation divisional application are
significantly higher than the additional fee pursuant to Article 2
item 1b of the Rules relating to Fees.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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