New Deadlines for Filing Divisionals at the EPO (12.03.2010)
Currently, a European divisional application can be filed as long as an earlier European patent application of the same family is pending. As of April 1, 2010, new regulations regarding the filing of divisional applications will come into force at the EPO (Rule 36(1) and (2) EPC). The rule change will apply to all divisional applications filed on or after April 1, 2010.
The EPO will distinguish between “voluntary” divisional applications and “mandatory” divisional applications, which are filed in response to a non-unity objection. The deadline for filing a voluntary divisional application is 24 months from the first examination report issued on the parent application (or any preceding divisional application, whichever examination report is issued first). A search report with a written opinion is not considered to be an examination report.
Mandatory divisional applications need to be filed within 24 months from a specific non-unity objection raised for the first time in an examination report. As with voluntary divisionals, a search report with a written opinion does not trigger the time limit for filing a divisional application.
Above time limits are not extendable. When missing a respective time limit, only a re-establishment of rights is possible. It should be kept in mind that the only previous time limit is still valid, i.e., regardless of the new 24 months time limit, a divisional application has to be filed at the latest one day before the grant of the parent patent is published.
In general, the new rules put applicants under pressure to decide very early in the proceedings whether to file one or more divisional applications. If no non-unity objection is raised, such a decision usually has to be filed before it is known whether the parent application will be granted. Thus, it might often be advisable to file a divisional application just to be on the safe side.
Therefore, applicants should think about requesting an accelerated examination (PACE program) to shorten the time period up to the grant of the parent application. This might bring the applicant into a better position regarding the decision about filing a divisional application. However, it has to be seen whether the EPO can handle a large number of PACE requests.
Another possibility for accelerated examination proceedings is to have the preceding PCT application searched by the EPO (as the ISA), which will issue the International Search Report (ISR). Upon entering the regional European phase, a fast mandatory reply to the ISR within a month from a respective notification needs to be filed (amended Rule 161 EPC). Thus, the proceedings may already by quite advanced at this early stage.
There is room for some more considerations. Especially, a non-unity objection coming up for the first time later in the proceedings might be taken as a new chance to file a (mandatory) divisional application. However, momentarily it is not yet clear what the actual practice of the EPO will be to prevent a misuse of the new regulations.
Examples incl. transitional provisions:
1. If the 24 months time limit has expired on or before April 1, 2010, a divisional application may still be filed within six months, i.e. up to October 1, 2010.
2. If the time limits are still running on April 1, 2010, the are extended at least for 6 months, i.e. until October 1, 2010:
a) Scenario I: If the 24 months terminate after April 1, 2010 and before October 1, 2010, a divisional application must be filed on October 1, 2010 at the latest.
b) Scenario II: If the 24 months terminate after October 1, 2010, a divisional application must be filed within 24 months after the issuance of the first examination report.
We advise that all pending applications are reviewed if there is any subject matter to be prosecuted in one or more divisional applications.