There have been mutterings and papers for some time about the EPO restricting the filing of divisional applications. They were viewed by some at the EPO as a thorn in the side of 3rd party rights.
It is now official – the EPO Administrative Council met 26 March 2009 and considered the filing of divisional applications to be “abusive” so they have signed off on an EPC rule change to Rule 36 severely limiting the opportunities to file divisional applications.
Under present Rule 36 EPC, a divisional application can be filed at any time before grant, abandonment or withdrawal of the parent case.
The new rule will restrict this deadline in two ways:
1. If the EPO do not raise an objection of unity of invention. Any divisional application(s) can only be filed within 2 years of the first communication from the examining division; and
2. If the EPO do raise an objection of unity of invention. Any divisional application(s) can only be filed within 2 years of the first communication from the EPO (not when acting as the International Search Authority) which identifies that there is more than one invention.
Here are some examples of how the new rule will work: An applicant can voluntarily file a first divisional from an original parent application, and a second divisional, from the first divisional. However both divisionals must be filed in the 2 years after the first examining division communication on the original parent application.
If the EPO identifies 3 different inventions in a search report on an original application, then the applicant must file divisional applications to each of the 2 additional inventions within two years of that search report. However, if one of those divisionals provokes a new lack of unity objection, then the new objection starts a fresh 2 year term for filing divisional applications for the newly-identified inventions.
There will be clarification to this proposed system in the year before the new rule takes effect. In the meantime, if you have any specific questions on how the new system will operate, please let us know.
The new rule will come into force on April 1, 2010. There will be a 6 month grace period, until October 1, 2010, for filing divisional applications outside the new two year periods.
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