In the recent case of Genentech Inc.1, the Registrar of Patents agreed to revisit guidelines issued by his predecessor in 2010 that held that the Patents Law should be interpreted as allowing applicants to file divisional applications only from the first, parent application and banned secondary divisional application (filed from an earlier application). Having accepted Genentech arguments, the ILPO will from now on allow filing a divisional from a pending divisional application (even after the parent application was accepted).
In July 2010, the ILPO revised a long standing practice, and issued guidelines (“the 2010 Guidelines”)2 forbidding filing of secondary divisional applications divided out of divisional applications. Accordingly, during the last a five and a half year, it was possible to file a divisional application only during the pendency of the (first) parent application (without restriction of the number of divisional applications). Once the parent was accepted and published for pre-grant opposition, and even if a divisional was still pending, filing an additional divisional was not possible, thus, at times, barring applicants ability to protect important aspects of an innovation disclosed in a patent application.
A patent application filed by Genentech (“the Genentech Parent Application”) was accepted (and opposed). Prior to the acceptance the Genentech Parent Application, Genentech filed a divisional application (“Div. 1”). During the pendency of the opposition, Genentech decided to file an additional divisional application (“Div. 2”). In view of the 2010 Guidelines, Genentech was prima facie not allowed to file Div. 2.
Taking the position that the 2010 Guidelines were ultra vires or that, alternatively, the 2010 Guidelines should be changed, Genentech filed the Div. 2, asking to be heard before the application will be refused on the basis of the 2010 Guidelines (“Genentech’s Request”). Genentech’s Request led to the decision now reported.
It is of note, in passing, that during the time Genentech’s Request was pending, both the Parent Application and Div. 1 matured into granted patents.
Accepting Genentech’s position, the Registrar of Patents held that the ILPO should no longer prohibit filing a divisional application out of another divisional application.
In reaching his decision, the Registrar accepted Genentech’s argument that it is the ILPO's duty to periodically revisit internal administrative guidelines such as the 2010 Guidelines and determine whether such guidelines remain necessary and adequate.
The Registrar then turned to review the comparative law and practice information which Genentech brought forward. The Registrar acknowledged that in the U.S., the Court of Customs and Patent Appeals found somewhat similar guidelines of the USPTO unlawful3, that the EPO (who also initially banned secondary divisional applications4) changed its practice and reinstated the possibility of filing secondary divisional applications5, and that filing secondary applications is not banned also in Australia and Japan.
Before making its decision, the Registrar conducted an empirical review of the effect of the 2010 Guidelines. The Registrar found that between 2006 and 2010, the percentage of divisional applications, out of all applications filed, has tripled. It was also found that the divisional applications consist about 10% of all filed applications. In view of these findings, the Registrar raised the possibility that this significant increase in the filing of divisionals with the Patent Office were an unintended consequence of the 2010 Guidelines.
In view of all of the foregoing, the Registrar of Patents held that the ban on secondary applications should be lifted and, consequently, that Genentech’s Div. 2 was regularly filed and that examination thereof should proceed.
Going forward, patent applicants will again be entitled to file a secondary divisional out of a pending divisional, after the parent application was accepted. Accordingly, innovators are now again in the position to obtain complete and adequate protection for the innovation they disclose to the public and to better plan their IP strategy and portfolio management.
We expect the Registrar to soon notify the public of an amendment to the 2010 Guidelines. We note, in this regard, that the Registrar commented in his decision, that other measures may need be adopted in order to provide certainty to the users of the patent system and the public at large and to ensure prompt resolution of examination of various members of one patent family. One such measure mentioned was increased filing fees for secondary divisional applications6 and limitations on the duration of examination.
It therefore remains to be seen how the ILPO will implement this decision and we will of course report such further developments.
Eran Bareket & Chen Ben Dori- Alkan