The European Patent Office (EPO) has taken steps to make filing for a patent in Europe a more streamlined process with the announced amendment of two unpopular rules.
The first of the amended rules is Rule 36, which imposed the so-called two-year divisional deadline. Rule 36 required the filing of any related divisional applications within 24 months after the first communication from the EPO’s Examining Division. If the divisional application was not filed within the two-year window, it was barred. Once the amended rule becomes effective on April 1, 2014, divisional applications may be filed at any point while the parent application is still pending, regardless of how long ago the first communication was issued by the EPO.
“This is a much-heralded development,” says Xavier Pillai, a member in Leydig’s Chicago office. “This change in Rule 36 will provide many advantages to patent applicants, as there will no longer be such a rush to file.” With the additional time now available, patent applicants can make a more informed decision on filing divisional applications, for example, by taking into account the progress of related patent applications in the U.S. or elsewhere.
The EPO has also announced that it will amend Rule 164, which banned performing additional searches on patent applications entering the regional phase of an international application that the EPO finds to lack unity of invention. Previously, if a search found that an application lacked unity of invention, only the first invention listed on the application would be searched, meaning that any other listed inventions were considered “unsearched.” This required those who faced unsearched inventions to file divisional applications to ensure the unsearched inventions were also searched and examined.
Once Rule 164 is amended and becomes effective on November 1, 2014, applicants will no longer be forced to file divisional applications if the EPO finds a lack of unity of invention. Rather, they will be invited to pay an additional fee within a two-month period to have any additional inventions searched.
“As with Rule 36, the amendment of Rule 164 will aid clients in their European filing,” Pillai says. “Where, in the past, a patent examiner may refuse to examine the entirety of a patent after finding lack of unity, the same patent examiner must now allow the applicant the opportunity to have any additional inventions searched. This will ultimately end up saving applicants financially.”