Following a decision from the governing body of the EPO in 2013 (previously reported here), two changes to the EPO rules came into force during 2014.
- RULE 36(1) EPC – TIME LIMIT FOR FILING DIVISIONAL APPLICATIONS
In 2010, the EPO brought in restrictions that meant an applicant wishing to file a divisional application had to ensure not only that the parent application was still pending, but also that either (i) the first substantive office action from the Examining Division had been issued no more than 24 months earlier, or (ii) a new non-unity objection from the Examining Division had been issued no more than 24 months earlier.
Starting 1 April 2014, requirements (i) and (ii) have been abolished for all applications pending before the EPO as of 1 April 2014, including those pending applications whose 24-month time limits had already expired.
Now, a divisional application can be filed at any time up until the grant or refusal of the parent application.
Alongside this change, the EPO introduced an additional fee for filing a divisional application from an application which is itself a divisional application. Starting at €210 for a second generation divisional application, the fee increases by €210 per generation up to a maximum of €840 for fifth and subsequent generation divisional applications.
It is thought that the eradication of the 24-month time limits is a welcome change for applicants and their representatives. Many considered the 24-month time limit to be too short to decide whether a divisional application was actually wanted or needed.
This rule change also reduces the burden involved in monitoring divisional time limits (especially for large patent families).
- RULE 164 EPC – ADDITIONAL SEARCHES FOR EURO- PCT APPLICATIONS
When a lack of unity is found during a search of the claims, the EPO searches the first-mentioned invention.
Those who file their application directly at the EPO are invited to pay one or more additional search fee(s) if they want to pursue one of the other invention(s). Unsearched inventions must be pursued in a divisional application, because the EPO requires that the claims relate to searched subject-matter. The alternative route – European regional phase of a PCT application (Euro-PCT) - is slightly more complex. The changes to Rule 164 EPC, which entered into force on 1 November 2014, aim to bring the two routes (Euro-PCT and Euro-direct) into greater harmony.
When the EPO as the International Searching Authority (ISA) makes a finding of lack of unity on a PCT application, the applicant is invited to pay one or more further (international) search fees to have further invention(s) searched.
Old Rule 164 EPC provided no additional opportunity during the European regional phase to have the other inventions searched. Under new Rule 164, if an applicant files claims for examination that relate to a previously unsearched invention, the EPO will invite the applicant to pay, within a period of two months, an additional search fee for each further invention he wishes to have searched. If an additional search is carried out, the results of the additional search will accompany the first communication from the Examining Division.
If the EPO was not the ISA for the PCT application, a supplementary search is carried out when that application enters the European phase. If this supplementary search finds that the claims lack unity (either in agreement with the opinion of the ISA, or otherwise) the first-mentioned invention is searched.
Under old Rule 164 EPC, applicants were given no opportunity to have other inventions searched under these circumstances. New Rule 164 EPC, however, provides the applicant with a two-month period to pay additional search fee(s) for any other invention that he wants the EPO to search. The supplementary search report is drawn up for all inventions for which a fee has been paid.
It is expected that the changes to Rule 164 will allow applicants using the PCT system greater flexibility in deciding how to achieve protection for their inventions in Europe in a cost-effective manner.