We would like to remind you that the transitional period for filing divisional patent applications under the old EPO rules will expire on 1 October 2010.  We recommend that you contact your patent attorneys to discuss the impact of the rule changes in advance of this deadline.

Summary

By a decision of 25 March 2009, the EPO amended the rules regarding the filing of divisional applications.  Under the amended Rule 36 EPC a voluntary divisional must be filed within 24 months of the examining division's first communication in respect of the earliest application in the sequence.  The earlier application must be pending at the time the divisional is filed, i.e. must not have been granted, lapsed, or withdrawn.  A mandatory divisional must be filed within 24 months of any communication in which the examining division raises a non-unity objection according to Article 82 EPC in relation to the pending application, with the proviso that the finding of lack of unity is raised for the first time in the communication.

The amended versions of Rule 36 EPC only apply to divisionals filed on or after 1 April 2010.  Where the 24-month time limits in the amended Rule 36 have expired before 1 April 2010, a divisional application may still be filed until 1 October 2010.  This is therefore an important date for any applicants who wish to file divisionals of their pending application and who received a first communication from the examining division, or a non-unity objection, related to that application prior to 1 April 2008.

This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to www.law-now.com/law-now/mondaq

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The original publication date for this article was 23/08/2010.