Important New Rules for Divisional European Patent Applications - January 2010
With effect from 1 April 2010, the European Patent Office will introduce new rules intended to limit patent applicants’ scope for filing divisional applications. The new rules are being introduced under the guise of preventing so-called ‘abusive’ divisional filings, in which claims of a refused patent application are prosecuted again in a divisional application. The new rules will be much more restrictive and may have the effect of reducing the workload of the Examining Divisions.
Present Practice
Simply: a divisional application may be filed at any time while a European Patent Application is pending (ie, not refused or granted).
New Rules
In addition to the above-mentioned requirement, the new rules http://archive.epo.org/epo/pubs/oj009/05_09/05_2969.pdf add two further conditions, at least one of which must be met for a divisional to be validly filed:
(i) ‘Voluntary’ Divisional Applications
Under Rule 36(1)(a) the applicant may file a divisional application within 24 months from the Examining Division’s first communication in respect of the earliest application for which a communication has been issued.
The European Patent Office has clarified that ‘first communication’ refers to an examination report issued under Article 94(3) of the European Patent Convention, or the notification of allowance under Rule 71(3) if no examination report has previously issued. Search reports and communications issued during the International Phase of an International Patent (PCT) application do not count as ‘first communications’ because these are not issued by an Examining Division of the European Patent Office.
This new rule will reduce the time during which an applicant can file a divisional application from a first European Patent application. Moreover, it will severely limit the ability to file a Voluntary divisional from an application which is itself a divisional. This is because the 24 month time limit runs from the issuance of the first examination report of the earliest application, which time limit typically will have expired before a divisional of a divisional is contemplated.
(ii) ‘Mandatory’ Divisional Applications
Under Rule 36(1)(b) the applicant may file a divisional application within 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.
Article 82 specifies that a European Patent application shall relate to one invention only, or to a group of inventions so linked as to form a common inventive concept. Accordingly, the Mandatory divisional deadline will run for 24 months from the raising of a non-unity objection by the Examining Division for the first time. Because the relevant non-unity objection will be raised in an examination report under Article 94(3) of the European Patent Convention, it follows that the deadline for a Mandatory divisional can never expire before the deadline for a Voluntary divisional.
The European Patent Office has clarified that ‘earlier application’ here refers to the immediate parent application on which the divisional application is based.
Because the first examination report is expected to raise any clear non-unity objection, we expect that the Mandatory deadline is most likely to be significant in cases where non-unity becomes apparent after the examination process has begun. This might happen, for example, because of prior art which renders an independent claim unpatentable and if the dependent claims lack a common inventive concept.
Transitional Provisions
A divisional application (Voluntary or Mandatory) may be filed on any pending European Patent Application until at least 1 October 2010.
We recommend that you review your European Patent applications in good time before the 1 October 2010 deadline to determine whether the filing of one or more divisional applications is appropriate to your needs.
The above represents a simplified summary of some major changes. Other new rules are being introduced on 1 April 2010, and in view of the potential complexity of the changes, advice on how best to deal with the effects and consequences may differ from one case to another. If you would like specific advice, please contact us either by phone on 01473 660600 or via email.