27 March 2010

Forthcoming Changes in the EPC: Filing Divisionals

On 1 April 2010 a number of changes to the Implementing Regulations of the EPC will enter into force (see Decision CA/D 2/09 of the Administrative Council of 25 March 2009 and OJ 2009, 296). These amendments can be roughly classified into
Below the new requirements as to filing of divisional applications are briefly addressed.

Amended Rule 36 EPC (terms for divisionals) entering into force on 1 April 2010 reads:
  1. The applicant may file a divisional application relating to any pending earlier European patent application, provided that:
    1. the divisional application is filed before the expiry of a time limit of twenty-four months from the Examining Division's first communication in respect of the earliest application for which a communication has been issued, or
    2. the divisional application is filed before the expiry of a time limit of twenty-four months from any communication in which the Examining Division has objected that the earlier application does not meet the requirements of Article 82, provided it was raising that specific objection for the first time.
  2. A divisional application shall be filed in the language of the proceedings for the earlier application. If the latter was not in an official language of the European Patent Office, the divisional application may be filed in the language of the earlier application; a translation into the language of the proceedings for the earlier application shall then be filed within two months of the filing of the divisional application. The divisional application shall be filed with the European Patent Office in Munich, The Hague or Berlin.
Voluntary Divisionals: According to new Rule 36 (1) a EPC, a divisional application may be filed in a pending application
  •  within 24 months as of the first communication of the Examining Division in the earliest application of a group of linked parent/divisional applications in which the first communication has been issued (Rule 36 (1) a EPC). 
    In case a number of divisional applications have already been filed when the first communication is issued for the parent application, the resulting 24-months term for filing voluntary divisionals is not only pertinent for the parent application for which the communication has been issued, but also for all pending (and future) divisionals thereof. In rare cases it may also happen, that a first communication of the Examining Division is not issued for a parent application but for one of its divisionals. In this case the resulting 24-months-term is also pertinent for the parent application and each further divisional application.

    Mandatory Divisionals: According to Rule 36 (1) b EPC, in a pending application a divisional application may also be filed
    • within 24 months as of any specific non-unity objection raised by the Examining Division for the first time (Rule 36 (1) b EPC).
    If a non-unity objection pursuent Art. 82 EPC is issued for a patent application, a 24-months term starts within which divisional applications may be filed, totally independent on the term for filing voluntary divisionals according to Rule 36 (1) a EPC. 

    Unresolved issues. Even though not yet confirmed by the EPO or its Boards of Appeal, I assume that within the term for filing mandatory divisionals, only such divisionals may be validly filed that cover subject-matter that needs to be cancelled from the application which was objected to, in order to overcome the non-unity objection raised.

    Further, since new Rule 36 (1) b EPC also requires that only a non-unity objection that has been raised for the first time may initiate the term for filing a mandatory divisional, it currently appears unresolved, whether or not the issuance of a non-unity objection in a parent application prevents initiation of a term for filing a mandatory divisional in a divisional application, in which the same non-unity objection is later raised as well.

    Entering into force: Amended Rule 36 (1) EPC will apply to all divisional applications filed on or after 1 April 2010, i.e. the new terms for filing voluntary and/or mandatory divisional applications have to be observed for all applications that are pending on 1 April 2010.

    If a term for filing volutary or mandatory divisions according to Rule 36 EPC expires before 1 April 2010, that term is extended until 1 October 2010. That is, the earliest possible expiration date of the terms according to amended Rule 36 EPC is 1 October 2010. Consequently, for all pending applications in which the first communication of the Examining Division was issued on or before 1 April 2008, the terms for filing voluntary divisionals end on 1 October 2010.

    Conclusion: I recommend that applicants should carefully review their pending applications with respect to the above issues. If a pending application is important, it may be an option to precautionally file a divisional application before 1 October 2010 just to be on the safe side if the imprtant application gets stuck in the proceedings up to grant. 

    There also were some speculations among patent attorneys that it could be an option to provoke a non-unity objection (and thus a new 24-months term for filing a divisional) if a divisional application needs to be filed after the term for voluntary divisionals has expired. However, I assume that Examiners will simply not allow amendments that lead to non-unity of the application, based on Rule 137 (3) EPC which reads "After receipt of the first communication [...] the applicant may, of his own volition, amend once the [application, whereas] no further amendment may be made without the consent of the Examining Division".

    In case any questions should occur regarding the above matter, you may always call me of send an e-mail.