On October 18, 2013 the Administrative Council of the EPO has voted to amend Rule 36 EPC to remove the highly controversial 24 month time limit applied to European divisional application filings. Starting April 1, 2014, the EPO will return back to ‘old’ practice, namely that …
… EP Divisional application(s) may be filed as long as there is a pending EP application. The 24-month time limits for the filing of divisional applications are then repealed.
Under the current EPO rules, introduced only a few years ago, an Applicant may voluntarily divide their European patent application within 24 months of a first Office Action in Examination or within 24 months of a lack of unity objection not raised earlier by the Examining Division.
Applicants may then strategically reopen an already closed divisional application filing window in still pending cases. That means cases where divisional filings under existing Rule 36 practice no longer is possible, may from 1 April 2014 divisional applications out of such cases at that time.
KIPA will be happy to advise on strategies to delay issuance of such pending cases to benefit of the revived ‘old’ practice. Please contact us via mail@kipa.se<mailto:mail@kipa.se>
There will be an additional fee as part of the filing fee for divisional applications of second or subsequent generation. This means that the filing of divisional applications in respect of earlier divisional applications will be subject to an additional fee. The amounts of this fee grow progressively with each subsequent generation of divisional applications up to a certain level, becoming then a flat fee. Fees are to be determined, but are expected to be in the range of several hundreds of Euros.
Since the previous amendment to current Rule 36(1) EPC entered into force on 1 April 2010, the overall number of EP divisional applications has actually grown. This growth was remarkable in the first year, due to the six-month grace period after the amendment’s entry into force (7 005 divisional applications were in the search stage in 2009, and 22 102 divisional applications in the year from April 2010 to March 2011). Since then, the figures have gradually decreased until the present time, where the number is slightly above the 2009 level (9 989 divisional applications from April 2012 to March 2013). Although the number of first-generation divisional applications has increased, the amendment has had an impact on the number of layers or generations of the divisional applications filed. The number of second-generation divisional applications declined from 19.8% of all divisional applications in 2009 to 7.1% in the period between April 2012 and March 2013 (i.e. from 1 701 to 914 applications). In the same period, the third generation diminished from 3.0% to 0.6% (from 255 to 82 applications) and the fourth generation from 0.6% to 0.1% (from 51 to 9 applications).
Since the Enlarged Board of Appeal issued its decision G 1/09 on 27 September 2010, in which it came to the conclusion that a European patent application which has been refused by a decision of the Examining Division is thereafter still pending within the meaning of Rule 25 EPC 1973 (current Rule 36(1) EPC) until the expiry of the time limit for filing a notice of appeal. Consequently, applicants may file divisional applications after refusal of the parent application, without the need to resort to precautionary filings before oral proceedings.