We have learnt that the EPO is poised to repeal the controversial two-year time limit for filing divisional applications. New rules, which will once again allow divisional filing throughout the life of a pending application, will take effect on April 1, 2014.

For cases that are currently pending, and where the existing two year deadline has passed, the ability to file a divisional will be reinstated on April 1, 2014, as long as the case has not been granted or refused by that date.

How do I take advantage of the change?

  1. For cases approved for grant

If a case has been approved for grant (this happens in the Communication under Rule 71(3)), there are a few strategies that might serve to delay grant until after April 1, to allow a divisional to be filed. For example:

  • Responses can be filed late, under further processing, adding about three months to the grant process.
  • Depending on when particular dates fall, you may be able to withhold a renewal fee and pay it with extension fees within six months, to prevent grant from taking place.
  • It may be appropriate and possible to request a correction or amendment in the text or drawings, which can cause the grant procedure to be restarted.

As there are several possibilities, we can work with you in deciding what the best strategy might be for any specific application.

  1. For cases heading for refusal

In the worst-case scenario, if an application is refused before April 1, 2014, the filing of an appeal will maintain pendency beyond that date and allow a divisional to be filed. Moreover, if the decision of refusal issues from late January onwards, it should be possible to file a divisional even without filing an appeal, because the application is regarded as pending until the time limit for appealing has passed.

  1. To avoid new fees

Finally, you should note that a new fee structure will apply to second or subsequent divisionals (i.e. when filing a divisional out of any application which itself is a divisional application). To avoid these fees, if you do currently intend to file a second generation divisional, and if you can legitimately do so under the current rules, our advice is to meet the original deadline and also file any such application before April 1, 2014.

Click here for information on another EPO practice change which opens up more search options for Euro-PCT Applications.