Relaxed requirements for divisional European patent applications

October 21, 2013

The deadline for filing divisional European patent applications will be amended 1 April 2014. It will again be possible to file divisional European applications as long as the parent application is pending.

For some time, there have been rumours and speculations that the time limit for filing divisional European applications would be amended. This has now been confirmed, and we are very pleased to share this good news with you.

On 18 October, the EPO announced a revision of the requirements for the filing of divisional applications, which involves amendment of Rules 36, 38, and 135 EPC. The result of this amendment is that it will once again be possible to file divisional EP applications as long as the earlier (parent) application is pending.

The current time limit for filing divisional European applications is either

A) 24 months from the first examination report issued for an application, or from the first examination report issued for the earliest application in a sequence of divisional applications, or

B) 24 months from the first communication in which the Examining Division has objected that an application does not meet the unity requirements.

Many applicants and other users of the system have considered these time limits to be very strict, and often difficult to comply with since all facts might not yet be known at the end of 24-month period. It seems that the EPO has listened to this criticism, as it has now announced a return to the time limit applicable before April 2010, which allowed the filing of divisional applications as long as the earlier (parent) application is pending.

The amended rules will enter into force on 1 April 2014. They will apply to all divisional applications filed on or after that date. This means that for applications pending on 1 April 2014 for which the 24 month-time limit has already expired, there will be a new opportunity for filing divisional applications. Applicants who have pending applications for which the current rules have prevented the filing of further divisional applications may therefore be benefit from a review of their cases, in order to check for new possibilities under the amended rules.

The 24-month time limit was introduced in order to prevent “abuse” of divisional applications. The EPO now has another solution to achieve this goal. Instead of limiting the period when divisional applications may be filed, any “abuse” will be dealt with through increased fees. For divisional applications of second or subsequent generations, i.e. for divisional applications based on an application which itself is a divisional application, there will be an additional fee as part of the filing fee. The amounts of the additional fee will grow progressively with each subsequent generation of divisional applications up to a certain level, and then remain on a fixed level.

We have not yet seen the amounts of the additional fee. If this additional fee turns out to be very high, it might be advisable to consider filing divisional applications prior to 1 April 2014, i.e. under the current Rules, provided that all time requirements can be fulfilled.

Maria Stenbäck
European Patent Attorney
Awapatent

21 October 2013