21/10/2013
On Friday, the European Patent Office announced a decision to repeal the 2 year time limit for filing divisional applications. Steve Howe has reviewed the background to the introduction of the 2 year time limit, the reasons for the EPO’s change of heart, and the implications of the change in practice going forward.
The New Regulations For Divisional Applications
The European Patent Office has announced that they are to abolish the 2 year time limit for filing divisional applications. The formal announcement can be viewed here.
The changes will come into effect from 1st April 2014. From that date, it will be possible to file divisional applications from any European patent application that is pending (in other words, any applications not yet granted or irrevocably refused). This will apply to all European patent applications that are pending on 1st April 2014, including applications where the previous 2 year deadline for filing a divisional application has already expired. The EPO have announced that increased fees for second and further generation divisional applications will also apply.
Background
Divisional applications are applications that are split out of an existing (parent) application to seek protection for an invention that is disclosed in the parent application, but which is not appropriately covered by the claims of the parent application. Divisional applications allow applicants who have filed a European patent application covering multiple inventions or multiple aspects of an invention to protect each of those aspects individually.
Prior to 1st April 2010, it was possible to file a European divisional application based on any pending European application. However, from April 2010, the Implementing Regulations of the European Patent Convention were amended to prevent the filing of a divisional application later than two years after the European Patent Office issued their first examination report. In some cases, this meant that applicants were prevented from filing a divisional application when it later became apparent that one was required. In other cases, applicants took the precautionary measure of filing a divisional application at the end of the two year period to ensure that they retained the option of protection for other aspects of the disclosed invention. The unintended result of the EPO limiting the term for filing divisional applications has actually been an increase in the number of divisional applications filed.
The New Provisions
Following a consultation earlier this year, in which less than 10% of respondents were in favour of the two year time limit for filing divisional applications, the European Patent Office has announced that they will revert to the pre-April 2010 provisions for divisional applications filed after 1st April 2014, repealing the present 2 year deadline. This means that for any applications that are pending on 1st April 2014, even those for which the first examination report issued more than two years ago, it will be possible to file a divisional application.
There will however now be a higher fee for second and subsequent generations of divisional applications, that is for divisional applications that are based on earlier divisional applications. It would seem that this is intended to discourage applicants from filing a string of divisional applications, a measure sometimes taken to keep an application pending for as long as possible, thereby increasing uncertainty for third parties. However, compared to the other official fees required for filing a divisional application, notably the high renewal fees, it seems likely that the additional filing fees for second and subsequent generation divisional applications will not be of great significance.
Will It Be Possible To File A Divisional Application Where It Is Currently Not Possible?
For European patents that have already been granted, and those which are deemed irrevocably withdrawn or refused, it will not be possible to file a divisional application. However, for currently pending applications which remain pending on 1st April 2014, the change in the Regulations will give applicants an opportunity to file a divisional application even where the opportunity to file a divisional application under the current regulations has already passed.
For currently pending applications, which could be refused, deemed withdrawn or granted before 1st April 2014, but for which it would be desirable to file a divisional application, there are ways of delaying the EPO’s final decision so that the application is still pending on 1st April 2014 and the filing of a divisional application is possible. For example, where the EPO has issued a notice of allowance on an application, and responding in the normal period by paying the grant and printing fees and filing claim translations would be expected to result in the patent being granted before 1st April 2014, grant could be delayed by making minor amendments to the claims of the application, requiring the application to be reconsidered by the EPO. Further processing could also be used. For cases that are refused by the EPO before 1st April 2014, the filing of an appeal will suspend the effect of the refusal and allow a divisional application to be filed.
Should Anyone Be Concerned About The Rule Change?
It is possible that third parties may have reviewed a competitor’s pending European patent application and, especially if the two year deadline for filing a divisional has passed, taken the view that there is no risk of infringing the claims likely to be granted on the application. However, for these cases, there will now be the opportunity for the competitor to file a divisional application for further inventions present in the original disclosure of the application. Revisiting the earlier analysis of infringement risk may therefore be advisable.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.
