Proposed Changes To EPO Divisional Application Rules

The European Patent Office is proposing to change the rules as to when divisional applications can be filed from a pending European patent application. Under proposals which are expected to enter into force next year, the fixed term currently given for filing divisional applications will be abolished. A new fee structure for divisional applications will be introduced at the same time.

Background

Currently the EPO allows a fixed two year term for filing voluntary divisional applications starting from when the first examination report is communicated to the applicant. This fixed term was introduced quite recently, in April 2010, before which there was no limit to when a divisional application could be filed from a pending parent application. This was intended by the EPO to deter long sequences of divisional applications which, in the eyes of the EPO, gave rise to third party uncertainty and possible abuse of process.

Since being introduced, this regime has come in for criticism as being complicated and unfairly restrictive. Furthermore, the EPO has acknowledged that it has been ineffectual in achieving its aims and has on the contrary led to a flurry of precautionary divisional applications being filed. The EPO now intends to change the regime again.

Proposed Changes

Amendments to the implementing regulations of the European Patent Convention have now been submitted to the Administrative Council for approval. Under proposed changes to Rule 36(1) EPC, the filing of divisional applications will be allowed at any time as long as the earlier EP application is pending. Thus, the current two year period limiting when divisional applications can be filed will be abolished.

Under proposed changes to Rule 38 EPC, the filing fee will be increased for any divisional application which itself is filed from an earlier divisional application. Thus, the cost of filing “granddaughter” or later generation divisional applications will be increased.

The EPO hope the new regime will deter long chains of divisional applications being filed without affecting “legitimate filing strategies”.

The envisaged date of entry into force of the amended Rules 36(1) and 38 EPC is 1 April 2014. They would apply to divisional applications filed on or after that date.

Advice

For any application where the two year period has already expired, a new opportunity will open up for filing divisional applications after the new regulations come into effect as long as the application is still pending at that time. For any such application which has reached the allowance stage at the EPO, various strategies might be used to delay proceedings at the EPO with the aim of delaying grant until after the new regulations come into force so that a divisional application can be filed.

It is not yet clear how much the increase in filing fee will be for a later generation divisional application. In most cases, filing strategy should aim to file any and all divisional applications from the original EP application to keep down costs. If a later
generation divisional application is planned, consideration should be given to filing this before the fees increase.

For important cases, it will once again be possible to file precautionary divisional applications before receiving a possibly adverse EPO decision, albeit sometimes at an increased cost.

If you would like to have more detailed advice on the matters arising from this note, or on any other matter, please contact us.