28 March 2013

Re-opening the Divisional Window

A recent notice from the European Patent Office (EPO) indicates that for some pending European patent applications where it was previously thought that the deadline for filing divisional applications had expired, it will in fact still be possible to file a divisional application. The notice concerns a change in the procedure for calculating the divisional filing deadline, which expires 24 months after notification of the communication under Article 94(3) from the examining division of the EPO.

In a significant departure from previous practice, the EPO have now decided that the 24-month period is not triggered by a particular type of Article 94(3) communication.  In practical terms, this means that in some cases the 24-month period may not have begun until later than was previously thought, or may not even have begun at all.  This decision is good news for applicants, because it may offer the opportunity to file new divisional applications in cases where it was previously thought that the 24-month deadline had expired.

Pending European patent applications will have to be reviewed on a case-by-case basis to determine whether the deadline for filing divisional applications has changed.  If you have any pending applications where a divisional application would be of interest but the 24-month deadline has apparently expired, please contact us.  We will be happy to review the case file and advise you as to whether it is now possible to file a divisional application.  It is worth noting that the information in the European Patent Register on the communication relevant for calculation of the time limit for filing divisional applications is now inaccurate in so far as it refers to a communication issued on EPO Form 2001A.

Applications affected by the change in EPO practice

According to the EPO’s notice, a communication issued on Form 2001A will no longer be regarded as triggering the 24-month period.  Therefore the decision only affects applications for which the first communication under Article 94(3) was issued on Form 2001A, which was used by the EPO between 2005 and 2012 in cases where the applicant had chosen not to respond to a negative search opinion.  Rather than including a detailed written opinion of the examining division, this type of communication would instead only include a brief statement along the lines of:
“The examination of the above identified application has revealed that it does not meet the requirements of the European Patent Convention for the reasons already stated in the European search opinion.”

Because communications on Form 2001A did not require a detailed examination of the application to be carried out, they were automatically generated by a computer and posted by a formalities officer without the involvement of the primary examiner.  For this reason, the EPO have decided that a communication on Form 2001A is not relevant for the purposes of calculating the 24-month time limit for filing divisional applications.

EPO consultation on the 24-month time limit

Separately, the EPO are currently running an open consultation on Rule 36 EPC, which governs the time limits for filing divisional applications.  Any interested parties are invited to submit their views on the current rule and on possible amendments, before the closing date of 5 April 2013.

By way of background information, it is worth noting that the 24-month time limit in Rule 36 EPC is a relatively recent development, having been introduced by the EPO on 1 April 2010 as an attempt to curb perceived ‘abusive’ practices, such as the repeated filing of divisional applications to maintain patent pending long after the original application had been refused.  Previously, Rule 36 EPC allowed divisional applications to be filed at any time while the parent application is still pending.  It is interesting to note that the Institute of Professional Representatives before the European Patent Office (epi) have proposed reverting to the original wording of Rule 36 EPC.   It is certainly arguable that reverting to the original wording would give greater legal certainty to both applicants and third parties, particularly since this latest development has drawn attention to the potential for confusion that exists within the current wording of Rule 36 EPC.