From April, there will be more freedom in working with divisional patent applications in Europe as the abolition of the 24 month time-limit in EPO's Rule 36 enters into force. Tom Ekeberg, European Patent Attorney at Zacco, explains the effects of this change.
First of all, what is a divisional application and what are the reasons for filing divisionals?
– A divisional application is a patent application filed with the same description as an already filed patent application, but with the patent claims directed towards a different invention. The reasons for filing a divisional application may be that you discover that your application contains more than one invention, or if you find out that what you really wanted to protect cannot be protected. Also, if the Examiner is willing to grant a much narrower patent than you feel that you are entitled to, you can accept the narrow patent and file a divisional application to give the wider scope of protection a second try.
The 24 month time-limit for filing a divisional application was introduced in 2010. What was its purpose?
– There are several reasons for restricting possibilities of filing divisional applications. If it is too easy applicants may file divisionals, just to have something pending. This adds to the workload of the patent office and also increases the burden of monitoring the patent landscape for third parties.
Why did EPO decide to abolish the time-limit?
– Because it has been very unpopular among practitioners and applicants. The time limit of 24 months seemed very arbitrary – you may have valid reasons for wanting to protect an invention that you did describe but not claim initially, also after 24 months have passed. Also, it added to the burden of the applicants as yet another due date to manage.
How does the change affect a typical patent applicant?
– It gives the applicant greater abilities to develop a flexible, more dynamic patent strategy as it provides the option to file a divisional application as long as the first application is still pending. This allows you to keep your options open. For example, you can keep a patent application pending if a competitor is about to put a new product on the market in order to adjust your patent claims to hinder that product. Or, if you have two or three inventions and cannot or do not want to prosecute them all at once, you can describe all of them in one application and find out if you can obtain protection for the most prioritised invention before deciding whether to prosecute the second and third invention in divisional applications.
Is there a need for companies to adjust their patent strategy?
– Yes. With the abolition of the time-limit, there will be more options available. This is something for companies to consider if they can take advantage of. Also, the change will increase the need for companies to monitor applications filed by others.
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.
