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New EPO rules for divisional applications

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New EPO rules for divisional applications

On 1 April 2010, new EPO rules for divisional applications will enter into force. The new rules introduce a new time limit for filing divisional applications.

The new rules for divisional applications have a major impact on users of the European patent system. In addition, it is questionable whether the effect desired by the EPO will be achieved.

Applicants of European patent applications will need to consider in a rather early stage of the examination procedure whether they want to file a divisional application or not.

Furthermore, creating a sequence of divisional applications may become difficult.

On the plus side of the ledger, the new rules will allow filing divisional applications in non-EPO languages, such as the language of a parent application which was filed in a non-EPO language.

Current practice
Currently, a divisional application can be filed as long as the parent application is pending. This means that nowadays a divisional application can be filed up to, but not including, the day the parent application is granted.

A common practice is to file a divisional application shortly before grant of the parent application, for example for pursuing a different invention therein or for pursuing broader claims or simply to have an application pending. Also, a divisional application is often filed to buy additional examination time, for instance by filing a divisional application shortly before oral proceedings in examination. Some applicants create a sequence of divisional applications in order to have at least one European application pending.

Such practices are now frowned upon by the EPO. In a landmark decision of the Enlarged Board of Appeal (G1/05), the Board found that the creation of a sequence of divisional applications, each containing the same broad disclosure as the original patent application, unsatisfactory and a misuse of the patent system. It called upon the legislator to define a remedy.

The alleged misuse of divisional applications is argued by the EPO with the following numbers. Approximately 5% of all European patent applications are divisional applications. Approximately 7% of all divisional applications are divisional applications of the second generation, this is approximately 0.35% of all European patent applications. Approximately 1% of all divisional applications are divisional applications of the third and higher generation, which is approximately 0.05% of all European patent applications. The EPO associates the alleged misuse in particular with divisional applications of the second and higher generation.

On 25 March 2009, the legislator, namely the Administrative Council of the EPO, decided to amend Rules 36(1) and 36(2) to limit applicants” use of divisionals to keep the application pending before the EPO.

New rules
The new rules impose time limits for filing divisional applications that depend on whether or not the divisional is in response to an objection for lack of unity.

Voluntary divisional application
A voluntary divisional application is a divisional application that is filed by the applicant, or example for buying additional examination time, or to pursue broader claims, or to have another application pending. A voluntary divisional application must be filed within twenty-four months of the first communication of the Examining Division in respect of the earliest application. By the “earliest application” is meant the very first European patent application in the series in which such a communication was issued.

A search report with a written opinion is not a communication of the Examining Division, but of the Search Division, and therefore does not trigger the time limit. A first communication of the Examining Division is usually a communication under Art 94(3) EPC or, if a first action is an allowance, Rule 71(3) EPC.

Mandatory divisional application
A mandatory divisional application is a divisional application that must be filed by the applicant if the applicant wants to pursue subject matter for which a non-unity objection has been raised in the parent application. A mandatory divisional application must be filed within twenty-four months from any communication in which the Examining Division raises a non-unity objection in the earlier application, provided it was raising that specific objection for the first time.

By the “earlier application” is meant the previous application in the series in which the non-unity objection was raised by the Examining Division. Again, a search report and written opinion on the search in which the non-unity observation is made does not trigger the time limit because it is a communication issued by the Search Division.

The first communication of the Examining Division in which the non-unity objection is raised does trigger the time limit. This communication is usually the first communication of the Examining Division repeating the findings of the Search Division. However, it can also be a subsequent communication issued in the course of the proceedings in which the nonunity objection is raised for the first time. If, in a (further) subsequent Examining Division”s communication issued in relation to the same application, the non-unity objection is repeated, the time limit does not start again.

Language
In addition to the introduction of the above time limits, the language requirement for a divisional application will be modified as well. Under current EPO practice, a divisional must be filed in the language of the proceedings of the parent application, which by definition must be English, German or French. When the new rules enter into force, the divisional application may be filed in the language of the earlier application, also if that language was a non-EPO language. A translation has to be filed within two months of filing the divisional application. Translation errors may be corrected throughout the proceedings.

Transitional provisions
The new rules enter into force on 1 April 2010 and shall apply to all divisional applications filed on or after that date. Transitional provisions will apply. If the two-year time limit would have expired before 1 April 2010, a divisional application may still be filed up to 1 October 2010. If the two-year time limit is still running on 1 April 2010, it will do so at least until 1 October 2010. This means that for many pending applications, a divisional application, if any, has to be filed before 1 October 2010. The time limits are excluded from the easy-to-handle remedy of “further processing”. Non-compliance with the time limit can only be re-established if all due care can be proven.

Consequences
The new rules for divisional applications imposed major consequences on the user of the European patent system. They mark the end of the current practice of filing a divisional application at any time. Also, it will become more difficult to create sequences of ivisional applications.

End of current practice
In the new regime, it will no longer be possible to continue the current practice of filing a divisional application at any time before grant of the parent application, for example shortly before grant of the parent application. In the absence of a request for accelerated examination, the grant of the parent application generally takes more than two years from the first communication from the Examining Division. With the new rules, filing a divisional application at that time would generally be too late. This is expected to create more uncertainty on the part of the applicants, because it may not be sufficiently clear for the applicant where the application is heading when termination of the two-year period is imminent.

The applicant may therefore choose to file one or more divisionals, to be better safe than sorry. This may lead to more, instead of fewer, divisional applications, contrary to the effect envisaged by the EPO.

Sequence of divisional applications – voluntary divisionals
Creating a sequence of divisional applications should still be possible, but if non-unity is not an issue, this has to be done within two years of the very first Examining Division”s communication on the very first European application. Nevertheless, this time limit may be too short for the applicant to have an idea where the application is heading. Therefore, the applicant has the possibility to request accelerated search and/or examination under the PACE program. The accelerated proceedings might be sufficient to bring the application to grant within the two years and thus, place the applicant in a better position to make an informed decision as to whether or not to file a divisional application. However, if (too) many applicants file such a request under the PACE program, this may create a backlog at the EPO, which undermines the accelerated character of the proceedings. This can already be observed now in some fields of technology.

Another strategy to accelerate prosecution at the EPO may be to demand preliminary examination of the International application, when the EPO is the ISA and IPEA. Upon entering the regional European phase after the PCT-phase, a swift reply to the invitation to file amendments under Rules 161/162 EPC becomes due (see the article by Marlon Blood), and the proceedings merely continue where they ended with the IPRP, giving the applicant a head start for the European examination.

One needs to also bear in mind that the Technical Boards of Appeal have issued some decisions in which it finds authority under the EPC for rejecting applications for double patenting. In a recent decision, a Board of Appeal came to the conclusion that a patent application may be denied for double patenting even when the divisional application contains claims that are broader than the claims in the parent application. So, a fast track procedure for a parent application pursuing limited claims and a divisional application in which broader claims are pursued, may encounter resistance from the EPO. Following this decision, the Examining Division may object more often to possible double patenting. Some signs thereof have already been observed.

Since this decision deviates from earlier decisions on double patenting, it is to be expected, or maybe hoped for, that a rejection based on double patenting will be referred to the Enlarged Board of Appeal. However, until then, this decision, although out of line with earlier decisions of Boards of Appeal, may create additional uncertainty when pursuing voluntary divisional applications.

Sequence of divisional applications – mandatory divisionals
Creating a sequence of divisional applications should be easier if a nonunity objection is raised because, then, a divisional application can be filed from an earlier divisional application as long as a new nonunity objection is raised in the earlier application.

Much is still unclear with respect to filing a series of divisional applications in case a non-unity objection has been raised. The consensus now seems to be that when the parent application contains subject matter A+B+C and the Examining Division raises a non-unity objection for three inventions, a divisional application can be filed for A+B, while C can be pursued in the parent application. In the divisional application for A+B, the Examining division will object against non-unity for two inventions A and B. A second divisional application can be filed for A within two years of the communication of the Examining Division with respect to non-unity of A and B in the first divisional application. Invention B can be pursued in the first divisional application.

However, this approach has not yet been confirmed by the EPO. In addition to the new rules for divisional applications, a new rule with respect to multiple independent claims in the same category (see the article by Marlon Blood) will enter into force. If the Search Division sees multiple claims in the same claim category, it shall invite the applicant to indicate for which claims a search has to be conducted. The Examining Division, in turn, invites the applicant to restrict the claims to cover searched subject matter only. This gives the EPO the possibility to choose between a non-unity objection and an objection to multiple independent claims in the same category when the latter applies, which may result in different time limits for filing a divisional application.

Summary
Applicants need to timely consider whether they want to file a divisional application before 1 October 2010 for their pending applications. In addition, applicants may wish to consider strategies for advancing prosecution of their applications prior to examination by the EPO Examining Division to make a more informed decision on whether or not to file voluntary divisional applications.

Furthermore, applicants will be able to file divisional applications in the same non-EPO language as the parent application to preserve the option of correcting translation errors in the divisional.

Since the applications need to be reviewed on a case-by-case basis, applicants are advised to contact their patent representative.

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