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02-11-2013 » Divisional applications at the EPO – back to square one

During its meeting last 16th October, the European Patent Office Administrative Council decided to change EPC Rule 36 which fixes the time limit for filing divisional applications.

Since 1st April 2010, this Rule imposes a fixed time limit for filing a divisional application, namely:

a)     either a time limit of 24 months from the Examining Division's first communication in respect of the earliest application for which a communication has been issued, or

b)     a time limit of 24 months from any communication in which the Examining Division has objected that the earlier application does not meet the requirements of Article 82, provided it was raising that specific objection for the first time.

This rule was created in order to limit the number of divisional applications filed, and to increase legal certainty for third parties faced with many separate applications capable of giving rise to uncertainty, lasting for many years, as regards the rights of the patentee.

However, the rule adopted in 2010 has not allowed the desired goal to be reached and, to the contrary, the number of filings of divisional applications has not decreased.

Furthermore, on account of its complexity, this Rule has given rise to criticism from the various players in the European patent system and last spring the EPO finally sought input by means of a consultation to assess the impact of this Rule on users.

The analysis of the answers received has led the EPO to change its position on this point.

Thus, as a consequence of the decision adopted by the EPO Administrative Council on 16th October 2013, it will once again be possible, as of 1st April 2014, to file a divisional application in respect of any earlier pending application. This decision will apply to all divisional applications filed as of that date, and should seemingly offer a new opportunity for filing a divisional application relative to any earlier pending application for which the 24-month time limit has already expired.

The EPO Administrative Council has nevertheless decided that there will be an additional filing fee for a divisional application of a second or subsequent generation. The amount of this fee (which has yet to be set) will escalate with each generation of divisional application.

Do not hesitate to contact us if you would like specific advice in relation to potential divisional applications of any of your pending European patent applications.

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