1 November 2013

The EPO Relaxes Its Rules On Divisional Filings – Part II

As reported in our recent article the European Patent Office (EPO) has decided to reverse its strict stance on the filing of divisional patent applications. We have now received further information about the upcoming rule changes direct from the EPO Patent Law Directorate, which we are pleased to pass on below.

Details of our original article can be found here.

The meaning of ‘pending’

As previously reported, the new provisions will come into force on 1 April 2014.  From that date, applicants will be able to file a divisional application relating to any earlier European patent application, simply provided the earlier application is still pending.

Following a decision of the Enlarged Board of Appeal of the EPO (in case number G1/09), a European patent application is considered pending, for the purposes of filing a divisional application, until the expiry of the time limit for filing a notice of appeal.  What this means is, if an application is refused by an Examining Division of the EPO, a divisional application can still be filed by the applicant, provided it is filed within two months of the notification of the decision of refusal.  There is no requirement for an appeal to also be filed.

Of course, under the current legal provisions, an applicant may only file a divisional application from a refused parent application if they are also 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.  Until now, therefore, the decision issued in G1/09 has had limited effect, as relatively few cases are refused within two years of the first examination report.
The Patent Law Directorate has confirmed that the law following G1/09 will not be changed by the new rules for filing divisional applications.  Consequently, under the new rules, applicants will be able to file a divisional application after refusal of the parent application, regardless of whether a notice of appeal is also filed.

This provision is intended to abolish the “undesirable” situation that occurred under the old rules (i.e. those that were in place prior to introduction of the current two-year time limit), where divisionals were filed as a precaution, prior to oral proceedings, in case the application under examination were refused.  The EPO did not welcome this practice, as it was considered detrimental to legal certainty for third parties as well as to patent office workloads.  Under the new rules and in light of G1/09, therefore, there will be no need to resort to such precautionary filings, which is welcome news for the EPO and applicants alike.

Difference between the new rules and the old rules

As previously reported, under the new provisions, an additional fee will be due as part of the filing fee for any divisional application that is filed from an earlier divisional application (i.e. for second, or later, generation divisional filings).

The Patent Law Directorate has confirmed that this is the only difference between the new rules and those that were in place prior to introduction of the current two-year time limit.  Thus, exactly as before, an applicant will be able to file as many divisional applications as desired, at any time during parent pendency and for any subject matter of interest (provided there is basis for the chosen subject matter in the parent application as filed).

Additional fee

The additional fee for second and subsequent generation applications is intended to discourage the filing of long sequences of divisionals, which was possible, and indeed regularly occurred, under the old rules.  Applicants were able to repeatedly file divisional applications in order to prolong the pendency of subject matter before the EPO.  The EPO did not welcome this practice, however, as it was again considered detrimental to legal certainty for third parties as well as to patent office workloads.

As previously reported, we do not yet know how expensive the additional filing fee will be; however, 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.  This incremental fee structure is in line with the rationale behind the introduction of the additional fee, i.e. to discourage repeated divisional filings.

It has been proposed by the President of the EPO that the increasing fees should remain moderate, however, so that legitimate filing strategies are substantially unaffected.  The Patent Law Directorate has confirmed that the exact amounts of this fee are to be decided by the Administrative Council in December 2013.

Reason for the rule changes

As alluded to above, the two-year time limit for filing divisional applications was introduced by the Administrative Council in a bid to curb the perceived “abusive” practice of using divisional applications as a tool for prolonging the pendency of subject matter before the EPO.  It was also intended to enhance efficiency and accelerate the grant procedure.

However, since this time limit was brought in, the EPO has actually seen an increase in the number of divisional applications being filed by applicants and it has received many enquiries from applicants as to what qualifies as a “first examination report” or “lack of unity of invention objection” for triggering the clock.  Many users have consequently not observed any expedited prosecution and the two-year time limit has also proven onerous to monitor.

Following an EPO consultation on divisional applications and discussions at various meetings throughout the year, the EPO has come to appreciate that the time limit has also forced applicants to file divisional applications before they are in a position to make an informed decision either way.  The viability of many of the divisional applications currently on file is therefore uncertain.

In addition, as above, G1/09 has done away with a founding basis of the time limit in any case, as there is no longer any need for ‘precautionary’ divisionals to be filed prior to oral proceedings.

The two-year time limit has therefore failed to achieve its objectives and, seemingly, has negatively impacted upon legitimate filing practices.  According to the Patent Law Directorate, the overwhelming disappointment caused by the two-year time limit, coupled with the lack of any real decrease in the perceived “abuse”, has caused the Administrative Council to relax its stance on divisional filings.

This is naturally very welcome news to all users of the European patent system.