Anticipation has become reality. As of 1 April 2014, the European Patent Office (EPO) will once again allow the filing of divisional patent applications at any time during the pendency of a family member patent application (ie, so long as a patent application remains pending, it is possible for divisional applications to be filed).
Between now and 1 April 2014, the current rules for filing divisional applications with the EPO remain in place- that is, a divisional application may only be filed within a 2-year period from issuance of a first examination report (issued by the examination division), or within a 2-year period from a unity of invention objection (issued by the examination division).
The change of divisional filing rules had recently been signalled by the EPO- although there had been no certainty the rule would be changed to revert to the original divisional filing rules we had been operating with.
One of the purposes for the EPO originally introducing the 2-year limit for filing of any divisional application had been for improving the certainty for third parties around whether a patent applicant had filed all possible patent applications, or whether further applications had yet to be filed (eg, perhaps targeting other subject-matter not previously claimed).
For patent applicants, the change in ruling by the EPO is good news. Once again it will be possible to continue filing divisional applications during the pendency of an existing application, and there will be reinstated the option for delaying filing of divisional applications until later in the progress of an existing European patent application to help defer costs. The EPO is proposing to introduce higher filing fees for divisional applications dependent upon when they are filed (ie, depending on how long after the first European patent application any divisional application is filed). Actual detail on such filing fees is not yet determined.
For patent applicants, we recommend you talk with your AJ Park contact to discuss how you may wish to take advantage of this ruling. For example, you may wish to slow down the examination procedure of any European patent application or take steps to avoid a European patent application from proceeding to grant before the new rules come into force.
For third parties, such as those who may be watching the patent applications of a patent applicant, this change in ruling is not such good news. Situations of uncertainty will once again need to become factored into the strategy of avoiding the patent rights of others, because there will be extended periods of time available for a patent applicant to file divisional applications.
For third parties, we recommend discussing the possible implications with your usual AJ Park contact. For example, you may wish to revisit or establish a strategy to once again begin watching any European patent applications of competitors that may pose a risk to your business, or which you want to monitor for strategic intelligence reasons.