The European Patent Office (EPO) has announced new rules for divisional applications entering into force on April 1, 2010 that set a time limit for the filing of divisional applications.
A divisional application is a patent application that may be filed in respect of a pending European patent application. It is typically filed for subject matter that is disclosed but not claimed in the parent application. The divisional application must not contain subject matter that extends beyond the content of the earlier application as filed.
Two kinds of divisional applications are distinguished, namely a voluntary and a mandatory divisional. A voluntary divisional is filed on the applicant”s initiative, whereas a so-called “mandatory” divisional is filed in response to a lack-of-unity objection. The new EPO rules set time limits for the filing of both mandatory and voluntary divisionals.
A voluntary divisional application must be filed within two years of the first communication of the Examining Division in respect of the earliest application. This means that the first examination report of the first application sets the time limit for the filing of any divisional application. Dividing a divisional application may still be possible, provided all divisional applications be filed within two years from the first examination report. The first examination report is not the written opinion issued with the search report by the Search Division, but a following communication.
A mandatory divisional application must be filed within two years of the communication of the Examining Division of the finding of non-unity. This time limit is irrespective of whether the application concerned is the earliest application or a divisional application itself.
As a transitional provision, the EPO has set the deadline for filing a mandatory and/or voluntary divisional application on 1 October 2010 at the earliest, if the respective time limits expire on or after 1 April 2010.