The European Patent Office has lifted the time limit on
the filing of divisional applications as of 1 April 2014. From now
on, it is again possible for divisional applications to be filed in
relation to any pending application, albeit at increased cost.
After almost four years and as a reaction to pressure from large
numbers of applicants - as well as, apparently, due to the isolated
position of the European Patent Office (EPO) in the handling of
divisional applications - the EPO has decided, effective as of 1
April 2014, to amend Rule 36 European Patent Convention (EPC),
together with Rules 35 and 135 EPC.
As a fundamental change, the 24 month time limit for filing
divisional applications has been abolished. From 1 April 2014,
divisional applications may once more be filed provided the parent
application on which it is based is still pending, irrespective of
whether and when communications of the examining division have been
issued. As there are no transitional provisions, the changes also
apply to (old) cases in which the 24 month time limit, under the
existing Rule 36 EPC, has already expired.
At the same time, however, the EPA requires extra fees for the
filing of higher generation divisionals, amounting to Eur. 210 for
a second-generation divisional, Eur. 420 for a third-generation
divisonal, Eur. 630 for a fourth-generation divisional, and Eur.
840 for a fifth-generation and any higher generation divisional.
In practice, the changes are to be welcomed. However, there are
still some things which applicants need to observe and consider:
As the time limit for divisional applications also ceases to
apply to competitors' applications, it could be the case that
relevant, new divisional applications could still arise from older
applications which had been believed to be "frozen". In
this case, competitors should be monitored accordingly.
One should also closely follow further developments in the EPA
in relation to divisional applications, in respect of both the
prevention of double patents and "poisonous divisional
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about your specific circumstances.
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