European Patent Applications – change in deadline for filing divisional applications

Posted by in Patents
  • Font size: Larger Smaller
  • Print

The European Patent Office has announced changes to R36 EPC with effect from 1 April 2014 such that a divisional application may be filed for any pending European patent application.  The wording of the changed rule appears to include those cases for which the current divisional deadline (2 years from issue of the first examination report) has expired but which are still pending as of 1 April 2014.

An additional fee (amount not yet announced) will be introduced as part of the filing fee for certain divisional applications. The amount of this fee will grow progressively with each subsequent generation of divisional applications up to a certain level, becoming then a flat fee.

The current rule was brought into effect in 2010 by the European Patent Office in an attempt to prevent “abuse” of the divisional system by the filing of one or more divisional applications shortly before the parent case was to be considered (and potentially rejected) at oral proceedings. However, the number of divisional applications in fact increased.  The effect of the current rules were further reduced by the decision of the Enlarged Board of Appeal on G 1/09 in which it was decided that a European patent application that was refused could still be used as the basis for filing a divisional application until expiry of the appeal deadline.

The announcement of the European Patent Office doesn’t quite admit the current version of Rule 36 EPC rule was a mistake but the practical effect cannot be denied. The change is welcomed and will lead to a return to a more reasonable approach to the filing of divisional patent applications.  We will be happy to provide specific advice should you have any query.

Jonathan is a British and European Patent Attorney. He studied Cybernetics with Computer Science at Reading University. He is also a Chartered IT Professional and is a member of the BCS, the Chartered Institute for IT. He is active in promoting IP awareness in IT companies and spends much of his time dealing with both IP for IT and technical IT issues.