From April 1, 2010, on New Regime on Divisional Applications
under the European Patent Convention (EPC)
As of April 1, 2010, new regulations of the EPC on divisional applications will come into force. They restrict the time period within which divisional applications can be filed significantly. Applicants must be much more cautious on filing divisional applications because - also in pending applications - time bars may appear that make divisional applications inadmissible. In the following you find information thereon.
Content:
1. Formalistics, law making
2. Legal situation
3. Entering into force, transition
4. Immediate consequences
5. Work around
1. Formalistics, law making
The Administrative Council of the EPO rendered in early 2009 a decision “CA/D 2/09” for changing the implementing regulations (i. e. the Rules) of the EPC. You can find said CA/D 2/09 at
http://archive.epo.org/epo/pubs/oj009/05_09/05_2969.pdf
By Article 1 1. of said decision CA/D 2/09, the EPC Rule 36 is cast into a new wording, recited in said Article 1 1. of CA/D 2/09. Article 2 of CA/D 2/09 stipulates entering into force of said new Rule 36 (namely on April 1, 2010), and Article 3 defines transitional regulations.
Explanations of the EPO on said new EPC Rule 36 can be found at
http://archive.epo.org/epo/pubs/oj009/10_09/10_4819.pdf
If you wish to see a complete list of all recent decisions of the Administrative Council of the EPO, you may refer to
http://www.epo.org/patents/law/legal-texts/journal/decisions.html
http://www.epo.org/patents/law/legal-texts/journal/decisions/archive.html
Legal projects at the EPO can be found at
http://www.epo.org/patents/law/legislative-initiatives.html
2. New legal situation
Under the new regime, the EPC introduces a distinction between two different situations when filing a divisional application and defines different deadlines as admissibility criteria for said different situations. The one situation is what is called “mandatory division”, the other situation is called “voluntary division”.
2.1 Mandatory division
A “mandatory division” is defined by new Rule 36(1)(b). It is a divisional application filed from a pending application after an objection of lacking unity from the Examining Division in said pending application. Note that said objection must come from the Examining Division (i. e in a communication under EPC Art. 94(3), formerly Art. 96(2)), not from the Search division (rendering the (Extended) European search report).
The term for filing a mandatory divisional application will last 24 months after receiving said objection of lacking unity from the Examining Division for the first time. According to the EPOs explanations, service of the respective communication triggers the deadline, so that the 10 days service rules applies. So, you can compute the term as follows:
Deadline = date of the “mandatory” relevant communication + 10 days + 2 years
Example: In the search report of April 20, 2010, lacking unity was stated. This objection was repeated in the later communication under Art. 94(3) dated
June 15, 2010. The deadline for filing a divisional application will then expire on
June 25, 2012.
2.2 Voluntary division
The “voluntary division” is covered by new Rule 36(1)(a). A divisional application not qualifying as a mandatory divisional application is a voluntary divisional application.
The term for filing a voluntary divisional application from a pending application is triggered by receiving in said pending application or in another application of the same patent family (parent, grand parent, ..., brother, other divisional) a first substantial examination report from the examining division (i. e. communication under Art. 94(3) or under Art. 96(2) in former times) and will last 24 months after receiving said examination report. Not the Extended European Search Report (EESR) will trigger this term because the EESR comes from the search division. Only a communication under Art. 94(3) or under Art. 96(2) in former times triggers the 24 months deadline. As above, service of the respective communication triggers the deadline, so that the 10 days service rules applies. So, you can compute
Deadline = Date of the “voluntary” relevant communication + 10 days + 2 years
Example: The pending application is already a divisional application. Its parent application has received the EESR on Nov. 1, 2008, and the first substantial examination report under Art. 94(3) on July 5, 2009. The term for admissibly filing another divisional from the pending divisional application is July 15, 2011.
2.3 Relation of deadlines of voluntary division and of mandatory division
The deadlines for a voluntary division and for a mandatory division are not exclusive against each other. If one of them applies, a divisional application is admissible.
The deadline for a mandatory division cannot expire before the deadline of a voluntary division because both require a communications from the Examining Division as trigger, but in the case of a mandatory division an additional prerequisite, namely an objection of lacking unity of the examining division in the same file.
3. Entering into force, transition
According to Art. 2 of CA/D 2/09 the new rules apply as of April 1, 2010, for all divisional applications filed on or after that date. Earlier examination reports (under Art. 94(3) or former Art. 96(2)) with or without objection of lacking unity will fall as “deadline triggering events” for voluntary or mandatory divisional applications under said new rules.
For avoiding short or already expired deadlines upon entering into force of the new regulations, Art. 3 of CA/D 2/09 defines a transitional term. According to said Art. 3, divisional applications can be filed in any case until Oct. 1, 2010, even if the deadlines for mandatory or voluntary divisional application have already expired earlier.
Example: A first substantial examination report was received on May 10, 2007. The term computed under new Rule 36 would already have expired (on May 20, 2009). But due to the transitional clause, a divisional application can be filed until
Oct. 1, 2010.
4. Immediate consequences
The new regulations have various consequences:
4.1. Check files
You must review your pending applications for content that might potentially be put into a divisional application.
If content for a divisional application is found, it must be checked whether the pending application has terms for filing a divisional application running. If the pending application is itself a divisional application, or has already served as a basis for another divisional application, you must check the entire patent family because triggering the term is effected “family-wide”, see above 2.2.
Note that a “divisional chain” as in earlier times (divisional from divisional from divisional from divisional ...) is still possible. But at least as far as voluntary, this filing chain will find its end 24 months after receiving a first substantial office action under EPC Art. 94(3).
4.2 Financial demand
It may be that before Oct. 1, 2010, an increased number of divisional applications must be filed. This will lead to an increased financial demand.
4.3 Ask us
We can assist you in reviewing files. If you wish so, please let us know.
5. Workaround, escapes
The question is whether remedies are available when a deadline for filing a divisional application has expired and filing a divisional application is nevertheless desired.
Summarizing the answer right away, one must say that no safe workaround is recognizable. But in certain situations, particular measures may be of help.
5.1 Uncertain: Provoking an objection of lacking unity
If the tem for filing a voluntary divisional application has already expired and the term for filing a mandatory divisional has not yet begun to run, one trick may be provoking an objection of lacking unity for obtaining the two years term for filing a mandatory divisional application. For this trick being successful it is required that
Note that instead of objecting to lacking unity the examiner may also respond by objecting to unsearched matter under EPC Rule 137(4). This would not open the term for filing a mandatory divisional application.
5.2 Not possible: Further processing
Requesting further processing after expiry of the deadline(s) for filing a divisional application is not possible because this is explicitly ruled out by new
EPC Rule 135(2). See in CA/D 2/09 Art. 1 3..
5.3 Requesting reestablishment of rights
The deadlines for a divisional application seem to be open for a request for reestablishment of rights. But this is a measure only after the deadline was missed inadvertently despite all due care was spent. A request for restitution requires a careful reasoning and means for substantiating the facts used for the reasoning,
e. g. an affidavit.