As widely reported, the European Patent Office has decided to change the regulations regarding the deadline for filing divisional applications, specifically, to abolish the current deadlines. Hence, from 1 April 2014, it will once again be possible to file a divisional application from any pending application.
New Rule 36 EPC will apply to all divisional applications filed on or after 1 April 2014. This means that a divisional application will be possible based on any application that is pending on or after that date, even if a deadline for filing divisional applications under the current regulations had already been set or indeed had passed. Thus, for many applications, the “window” for filing divisional applications will re-open.
There will be an additional filing fee for second and subsequent generation divisional applications (i.e. divisionals of an application that is already a divisional application). The amount of this fee has not yet been set, but it is thought that it will be based on the current filing fee (115 Euro for online filing) and will not be excessive.
In addition to the new divisional rules, the Administrative Council also voted to amend the rules relating to the supplementary search procedures for PCT applications entering the European regional phase. Under the new rule, applicants will be given the opportunity to pay additional search fees to have additional subject matter searched, in cases where the application is found to lack unity at the supplementary European search stage.
The EPO performs a supplementary European search on all PCT applications entering the European regional phase (‘Euro-PCT’ applications), for which the EPO did not act as international search authority. Under current Rule 164 EPC, when the EPO finds a lack of unity when performing the supplementary search only the invention first mentioned in the claims is searched. There is no opportunity to choose a different invention to be searched or to pay additional fees to have the other invention(s) searched. In contrast, if the EPO finds a lack of unity during the European search on a direct EP application, the applicant is given the opportunity to pay further search fees. This was seen by many as being unfair on Euro-PCT applicants (particularly those who do not use the EPO as international search authority) and so the new rule will be very welcome.
Under the new rule, if a supplementary search is performed and a lack of unity is found, the EPO will search the first invention and will invite payment of further search fees in respect of any further invention(s) which the applicant wishes to be searched. Furthermore, in cases where no supplementary search is performed (i.e. where the EPO was the international search authority), if claims are presented for examination which relate to an invention which was not searched in the international phase (perhaps because a lack of unity was raised in the international search but no additional search fees were paid, or perhaps because the claims have been significantly changed on entry to the regional phase), the applicant will be given the opportunity to pay further fee(s) for a search on those inventions. This should make the Euro-PCT procedure much more flexible for applicants. These changes will come into force on 1 November 2014.