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 applications".
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