December 16, 2013

Divisional Applications in Europe: Return to Old Practice

Dr. Ilan Cohn, Senior Partner
Dr. Ilan Cohn

Senior Partner

Reinhold Cohn & Partners

The rules providing a 24-month window in which to file divisional applications (which came into effect on April 1, 2010) will be abolished as of April 1, 2014. From that date, any pending application may form the basis for filing a divisional application. Extra fees may be charged for the filing of divisional applications stemming from an already filed divisional application.

Effective April 1, 2010, the rules relating to the filing of divisional applications were amended by imposing a 24-month time limit on filing a divisional application, from the latter to occur: (i) an Office Action on the merits; or (ii) an objection of non-uniformity (i.e. examiner alleging the claims define more than one invention)1.

In response to user feedback, the Administrative Council of the European Patent Office (EPO) came to the conclusion that the imposed 24-month time limit has not achieved its intended purpose, while the burden on patent applicants has increased considerably2. Consequently, the Administrative Council decided that the 24-month time limit for filing divisional applications will be abolished as of April 1, 2014 and that it “shall apply to divisional applications filed on or after that date”.

Basically, in its decision, the Administrative Council has decided to reinstate the old rules relating to divisional applications that existed prior to April 1, 2010.

With the new rules, it will be possible, as of April 1, 2014, to file a divisional application as long as there is a pending European application at the time of filing. This applies not only to a divisional application filed out of a parent application but also to a “granddaughter application,” namely a divisional application that is filed out of a divisional application.

One of the consequences is that in cases in which the 2-year time limit has already lapsed and it is no longer possible (under the existing rules) to file a divisional application, there will be an option to file a divisional application after April 1, 2014, as long as the patent application remains pending.

Thus, in some cases in which there had been an interest to file a divisional application out of an existing application, and the 24- month window was missed, there is a rationale to delay grant procedures of the pending application until April 1, 2014; and proceed therewith only after April 1, 2014, once the divisional application has been filed.

Finally, note also that the new rules permit the EPO to fix extra fees applicable to granddaughter (and also great-granddaughter) applications. The fee will be decided by the end of this year. In order to avoid payment of the extra fee, divisional applications should preferably be filed out of a parent application.

1 In this connection, reference is made to our newsletter of August 2010 entitled “Divisional Applications in Europe: New Filing Time Limits.”

2 Among the purposes of this rule was an increase in certainty of third parties. However, applicants often had to consider filing speculative divisional applications when the outcome of examination of parent applications was not known, which in turn led to an increase in filing and a heavy burden on applicants.

This article is provided for general information only. It is not intended as legal advice or opinion and cannot be relied upon as such. Advice on specific matters may be provided by our group’s attorneys.

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