No one will need reminding that Rule 36 EPC was amended back in 2009 to limit the time within which a divisional application could be filed at the European Patent Office (EPO). The EPO has, however, now decided to amend Rule 36 EPC and remove the controversial two year time limit.
Rule 36(1) EPC currently states:
(1) The applicant may file a divisional application relating to any pending earlier European patent application, provided that:
(a) the divisional application is filed before the expiry of a time limit of twenty-four months from the Examining Division’s first communication under Article 94, paragraph 3, and Rule 71, paragraph 1 and 2, or Rule 71, paragraph 3, in respect of the earliest application for which a communication has been issued, or
(b) the divisional application is filed before the expiry of a time limit of twenty-four months from any communication in which the Examining Division has objected that the earlier application does not meet the requirements of Article 82, provided it was raising that specific objection for the first time.
The two year time limit was originally introduced to limit the use of divisional applications as a tool for prolonging the pendency of subject-matter before the EPO. In particular, they wanted to reduce the practice of ‘precautionary’ divisionals - divisional applications filed the day before oral proceedings in case the parent application was refused.
However, contrary to this intention the two year time limit actually resulted in an increase in the number of divisionals filed. This increase is mainly due to applicants being forced to make a decision on whether to file a divisional when they did not know how the prosecution of the parent would proceed.
Additionally, the Enlarged Board of Appeal’s decision of G 1/09 (27 September 2010) means that applicants no longer need to file precautionary divisionals, since an application is ‘pending’ within the meaning of Rule 36 EPC until the end of the two month time limit for filing an appeal from a refusal decision by the examining division. Consequently, applicants can file divisional applications after refusal of the parent without the need to resort to precautionary filings before oral proceedings.
As well as failing to meet the aims of its introduction, Rule 36(1) EPC time limits have been difficult to monitor. The time limits do not apply to individual applications but to whole sequences of applications, so often to ascertain a divisional deadline for one application it is necessary to look at the examination of all the other applications of the same sequence. Furthermore, once a triggered time limit has expired, further periods for division may occur later under Rule 36(1)(b) EPC. An application must therefore be monitored throughout its prosecution for possible ‘new’ unity objections. This means that a more complex and resource intensive monitoring system is required, it is not possible to simply rely on a docketing department.
Following consultations and discussions on how Rule 36 EPC ought to be amended, the Administrative Council of the EPO has now agreed to amend Rule 36 EPC to remove the controversial two year time limit (by the Administrative Council decision CA/89/13 of 27 September 2013).
Amended Rule 36(1) EPC will read:
(1) The applicant may file a divisional application relating to any pending earlier European patent application.
Rules 36(2)-(4) are unchanged.
Rule 135(2) EPC has also been amended to delete the reference to Rule 36(1) EPC being among the time limits for which further processing is ruled out.
Finally, in order to reduce the number of divisionals filed, the Administrative Council has agreed to amend Rule 38 EPC to establish an additional fee as part of the filing fee when a second or subsequent divisional application is filed. This additional fee will not be incurred by first generation divisional applications, only divisional applications prolonging an existing sequence.
New Rule 38(4) EPC will read:
(4) The Rules relating to Fees may provide for an additional fee as part of the filing fee in the case of a divisional application filed in respect of any earlier application which is itself a divisional application.
The fee will increase progressively as the sequence grows - this is intended to discourage the filing of long sequences of divisional applications - and the amount of this additional fee will be decided in 2014. The rules relating to fees will also have to be amended but this did not form part of CA/89/13. These rule changes will come into force on 01 April 2014 and will apply to divisionals filed on or after that date.
Applicants who are considering filing divisional applications may wish to consider extending prosecution to ensure that their cases are pending on 01 April 2014. This should guarantee that a divisional can be filed.