European Union: The EPO Rescinds Its Current Practice For Divisional Filings

The rumors that the European Patent Office ("EPO") would change its current practice of forcing applicants to file divisional patent applications within certain two-year time windows have obviously been confirmed as true by an official notice posted on the EPO's website on October 18.

Even though the decision of the Administrative Council amending Rule 36 EPC concerning divisional applications is yet to be published in the Official Journal of the EPO, the news appears to bring long-sought relief for applicants and patent practitioners.

Current EPO Practice

Prior to April 1, 2010, the relevant provisions of the EPC allowed divisional applications to be filed at any time while the parent application was still pending. The 24-month time limit was introduced by the EPO on April 1, 2010 with the aim of limiting the use of divisional applications as a tool for prolonging the pendency of subject-matter before the EPO. Specifically, such filing tactics that resulted in "duplication" of proceedings were considered as "abusive" and detrimental to legal certainty for third parties as well as to EPO workloads.

According to the current provisions that entered into force on April 1, 2010, divisional applications can be filed in relation to any pending earlier European patent application, provided that the divisional application is filed before the expiry of 24 months from the first examination report in respect to the earliest application for which a communication has been issued (voluntary divisionals), or 24 months from any communication in which the Examining Division raises a lack of unity of invention in the earlier (parent) application for the first time (mandatory divisionals).

However, the 24-month time limit for the filing of divisional applications has proven to be very stringent on applicants, who are not always in a position to make an informed decision on whether or not, and if so how many, further patent applications should be filed so early on during prosecution. Applicants have opted for the filing of divisional applications as a precautionary measure before the expiry of the existing time limits and as a fall-back position, often with a great deal of uncertainty as to the extent of protection in relation to the parent application. As a result, the EPO has observed an overall increase in the number of divisional applications.

In view of the comments and inquiries from users and interested parties, the EPO decided to undertake an open consultation on the provisions governing the time limits for filing divisional applications. The abolition of the 24-month time period for filing divisional applications appears to be the result of the consultation and the assessment of the same by the EPO's Administrative Council.

The New Rules

In its decision of October 16, the Administrative Council of the EPO adopted a proposal submitted by the president of the European Patent Office in September for the amendment of the EPC Rules regarding divisional applications. The new provision, which is anticipated to enter into force on April 1, 2014, rescinds the 24-month time limit, thus allowing the filing of divisional applications as long as the earlier application is pending. According to the proposal, there will be no transitional period; thus, the new provision will apply to any divisional application filed on or after April 1, 2014. Given that the only requirement is the pendency of the earlier application from which the divisional should derive, the new rule will apply even if the current 24-month time limit under current Rule 36 EPC has already expired.

The abolition of the 24-month time limit will come along with a new provision regarding an additional fee as part of the filing fee in the case of a divisional application filed with respect to any earlier divisional application (i.e., for second, or subsequent, generation divisional applications). This fee is proposed to progressively grow with each subsequent generation of divisional, while remaining moderate, up to a certain level. It is important to note that the additional fee would not become due with respect to first-generation divisional applications, but only with respect to second and subsequent divisional filings. The amounts of these additional fees will need to be fixed by the EPO's Budget and Finance Committee in the months to come.

How to Proceed?

The new provision will reopen opportunities to file divisional applications and, from April 1, 2014 on, essentially revert to the "pre-April 2010" practice. In the interim, the following scenarios might be worth considering:

For example, where the time limit to file divisional applications under the current provisions has already expired for a pending application that is expected to grant prior to April 1, 2014, applicants may decide to delay proceedings to take advantage of the new rules to file (further) divisional applications.

In certain other cases, for example where the final opportunity to file divisional applications under the current rules will in any case end between now and April 1, 2014, one can assume that applicants who envisage the filing of numerous divisional applications based on a single pending application will become creative and might consider the filing of just a single divisional application now and postpone the filing of further divisional applications to a later date. However, whether this is a valid or reasonable strategy remains to be discussed, and, as always, appropriate filing strategies should be carefully assessed on a case-by-case basis.

Where the 24-month time limit for a pending application under the current provisions is still running and would expire only after the new rules enter into effect, applicants may nevertheless consider filing their divisional application(s) prior to April 1, 2014 in order to avoid payment of the additional fee for a second or subsequent generation divisional application.

In any case, the amendment to Rule 36 EPC that is envisaged to enter into effect on April 1, 2014 is generally welcome by most applicants and patent practitioners, as it will enable the filing of divisional applications at any time as long as the earlier (parent) application is pending. This allows applicants to again optimize their patent prosecution strategies in accordance with their business objectives and economic possibilities.

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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