16 October 2013

The EPO Relaxes Its Rules On Divisional Filing – Part I

Some of you may have heard the rumours that have been circulating this week of the European Patent Office (EPO) deciding to reverse its strict stance on the filing of divisional patent applications. A notice has been posted on the EPO’s website today, and so we can now confirm that the rumours are indeed true.

Under the current legal provisions, an applicant may file a divisional application relating to any pending earlier European patent application, provided that the divisional application is filed within two years from the first examination report (meaning that issued on the earliest application, for a sequence of divisional applications) or within two years from when the Examining Division first raises a lack of unity of invention objection, if later.
The new provisions, which will come into force on 1 April 2014, do away with the strict two-year time limit.  As such, applicants will be able to file a divisional application relating to any earlier European patent application, provided the earlier application is simply still pending.

There will be no transitional period and so the new provisions will apply to any divisional application filed on or after 1 April 2014.  The new rule will thus apply even if the current two-year time limit has already passed.
Under the new provisions, an additional filing fee will be due for any divisional applications that are filed from an earlier divisional application (i.e. for second, or later, generation divisional filings).  We do not yet know how expensive this fee will be; however, we do know that the amounts of this fee will grow progressively with each subsequent generation of divisional applications up to a certain level, becoming then a flat fee.
There are two immediate action points arising out of this welcome news.

Firstly, the new provisions will re-open an opportunity for a divisional application to be filed, where the current two-year time period for a pending application has already expired, or will expire prior to 1 April 2014.  If applicants for such applications are interested in filing a new divisional application, but it is likely that the current application will grant before 1 April 2014, they should therefore make use of the available options for delaying grant.

Secondly, it is possible that the additional fee for second, or later, generation divisional filings will be very expensive.  If applicants are considering filing such a divisional application, they should consider doing so by 31 March 2014 (provided they are still within the two-year time frame for filing a divisional application, under the current rules).

The current two-year time limit on the filing of divisional applications has proven to be very tough on applicants, who are not always in a position to make an informed decision on whether or not a further patent application should be filed so early on during prosecution.

The time limit was introduced by the EPO on 1 April 2010, however, as an attempt to curb perceived ‘abusive’ practices, such as the repeated filing of divisional applications to maintain the existence of a pending application long after the original application had been refused.  Prior to that, the relevant provisions allowed divisional applications to be filed at any time while the parent application was still pending.

The new provisions thus see a return to the more lenient provisions that were in place prior to 1 April 2010.  This change follows an open EPO consultation on the provisions governing the time limits for filing divisional applications.  It seems that the Administrative Council at the EPO listened to the responses that they received in this regard, as the majority were in favour of such a return.

Applicants will therefore, once again, be able to enjoy the freedom and security of being able to file a divisional application at any time while an application is pending.  For example, if an applicant’s business objectives change, then they can file a divisional application and pursue an invention which better suits their objectives.  Also, if an applicant is worried about the outcome of an application, for instance, if they are concerned that the application will be refused at oral proceedings, then they can file a divisional application as a precautionary measure and thus ensure the existence of a pending application.

Naturally we are on hand to advise on the filing of any divisional applications, and will keep you informed of any further developments at the EPO in this regard.