The European Patent Office has rectified the harsh EPC rules on divisional applications and additional searches by adopting the wisdom of the past. Stephen Beney & Reshika Dhir at Bereskin & Parr LLP explain.
The Administrative Council of the European Patent Office (EPO) has recently announced significant amendments to existing European Patent Convention (EPC) rules related to divisional applications and additional searching of European national phase applications. First, the 24 month deadline for filing a divisional application is being abolished (Rule 36(1) EPC); and second, procedural changes surrounding unity objections raised in a PCT-application entering the regional phase have been introduced (Rule 164 EPC). By way of these amendments, the EPO has adopted previous applicant-friendly provisions that provided a suitable balance between flexibility for the applicants and minimization of unnecessary divisional application filings.
Divisional filing deadline repealed Less than five years ago, the Administrative Council voted in favor of amending Rule 36 EPC to introduce a 24-month time limit within which European divisional applications may be filed. The motivation behind this controversial rule change was to prevent the alleged abuse of the system of divisional filings by applicants. In particular, the 24 month restriction on divisional filings was intended to prevent applicants from maintaining a series of pending divisional applications for a prolonged period resulting in a lack of certainty for the public. The 24 month deadline was also intended to prevent applicants from filing one or more ‘precautionary’ divisional applications shortly before the parent application was to be considered (and potentially rejected) at oral proceedings. This practice was perceived as unsatisfactory since it allowed applicants to file a series of divisional applications, each containing the same broad disclosures of the original patent application, and keep them pending for up to 20 years.
Thus, on April 1, 2010, Rule 36(1) EPC was amended. Prior to April 1, 2010, Rule 36(1) stated:
36(1): The applicant may file a divisional application relating to any pending earlier European patent application.
After April 1, 2010, above-mentioned Rule 36(1) EPC was amended to provide the current Rule 36(1) EPC, which states:
36(1): The applicant may file a divisional application relating to any pending earlier European patent application provided that:
(a) the divisional application is filed before the expiry of a time limit of 24 months from the Examining Division’s first communication in respect of the earliest application for which a communication has been issued, or
(b) the divisional application is filed before the expiry of a time limit of 24 months from a communication in which the Examining Division has objected that the earlier application does not meet the requirements of
Article 82 EPC.
According to the current Rule 36(1) EPC, in order to file a divisional application, there is a time limit of 24 months from the first examination report issued in the first parent application, or a time limit of 24 months. Request a free trial to read more.
Stephen M. Beney
Stephen is a partner and patent and trademark agent at Bereskin & Parr LLP. Stephen’s practice focuses on the preparation and prosecution of patent applications in the mechanical, electro mechanical and software fields. He advises on IP management and strategic planning and has prepared many patentability opinions, as well as infringement and validity opinions.
Reshika is an associate in the Electrical & Computer Technology practice group at Bereskin & Parr LLP. Reshika’s practice focuses on patent drafting and prosecution, with an emphasis on electrical, electro-mechanical and software innovations. She advises on patentability of inventions and strategic IP portfolio development.