New European divisional application fees: The other side of the coin

Accompanying the amendment of Rule 36 (1) EPC rescinding the 24 month deadline for filing divisional patent applications (please see our earlier article further below) there is also a new Rule 38 (4) EPC. This gives the EPO the basic right to levy an “additional fee as part of the filing fee” for a divisional patent application of second or further generation (e.g. a divisional of a divisional, or beyond).

We can now report that the Administrative Council on 13 December 2013, with the amendment of Article 2 of the Rules relating to Fees (CA/D 14/13) effective 01 April 2014, has finally also decided on the actual amounts in Euros of this “additional fee”, which are as follows:

• fee for a divisional application of second generation – EUR210
• fee for a divisional application of third generation – EUR420
• fee for a divisional application of fourth generation – EUR630
• fee for a divisional application of fifth or any subsequent generation – EUR840

Introducing such fees in replacement of the tight 24 month deadline regime and the amounts involved are widely considered a fair compromise between the legitimate right of an applicant to file one or more divisional applications as they see fit in order to best secure their position on the one hand, and legal certainty for third parties on the other. The latter is said to have been undermined by an alleged abuse of the right to file divisional applications through deliberately filing a disproportionate or excessive number of such applications and therewith keeping them pending with potentially unpatentable subject matter without a final decision thereon for as long as possible. Accordingly, the rationale behind the new scheme is to discourage the filing of too many divisional applications by imposing an additional fee on the applicant which increases with the number of the generation of divisional application filed.

The introduction of the additional fee is not the only measure in this regard though, for it is said that the EPO will also take measures to speed up the examination of divisional applications and decide on the patentability of the subject matter of such applications and hence their grant or refusal in a more timely manner.