Last October we reported on the decision of the Administrative Council dated October 16, 2013 amending Rule 36 of the Implementing Regulations to the EPC and abandoning the time limits for filing divisional applications which had been introduced in 2009. As to the background of this amendment, reference is made to BARDEHLE PAGENBERG IP Report 2013 Special/II. In the meantime the Administrative Council has also amended the Rule relating to Fees and fixed the fees foreseen in new Rule 38 (4) EPC for divisionals from divisionals.

The situation under the revised provisions can be summarized as follows:

  1. Rule 36 (1) EPC as amended reads as follows:

“The applicant may file a divisional application relating to any pending earlier European patent application.”

The amendment enters into force on April 1, 2014, and is applicable to divisional applications filed on or after that date.

  1. In accordance with the Guidelines for Examination A-IV, 1.1.1.1, the following principles apply in respect of the pendency of an application:
  • An application is pending up to (but not including) the date that the European Patent Bulletin mentions the grant of the patent.
  • If an application is deemed to be withdrawn, the application is no longer pending when the non-observed time limit has expired, unless the loss of rights is remedied by further processing or by re-establishment of rights, as the case may be.
  • If an application has been refused, it remains pending if an admissible appeal is filed. If no appeal is filed, the application remains pending until the expiry of the time limit of two months for filing the appeal.
  1. The amendments lead to the following practical consequences and recommendations:
  • For an application pending on April 1, 2014, a divisional application may be filed even if the presently applicable time limits of 24 months have already lapsed. The lapse of the time limits for filing a voluntary or obligatory divisional application in Rule 36 (1) a) or b) EPC in its version as applicable until the end of March 2014 has only negative consequences for an application which is no longer pending on April 1, 2014. If a divisional application may be needed, it might therefore be preferable to prolong the pendency of an application.
  • in the communication under Rule 71 (3) EPC (intention to grant), the applicant is given a non-extendable time limit of four months for fulfilling the formal requirements for grant (translation of the claims and payment of the fee for grant and publishing). When these requirements are fulfilled, the EPO issues the decision to grant. In this decision, the applicant is informed of the date of publication of the grant. The time period between fulfilling the formal requirements for grant and publication in the Bulletin may be somewhat less than six weeks.

Thus, an applicant having recently received a Rule 71 (3) communication and using the full time period of four months can be sure that the mention of the grant will be published after April 1, 2014, i.e. the application will be pending on that date and a divisional application may still be filed.

  1. Pursuant to Article 2 item 1b of the Rules relating to Fees as amended, the additional fee in the case of a divisional application filed in respect of any earlier application which is itself a divisional application has been fixed as follows:
  • Fee for a divisional application of second generation: 210 €
  • Fee for a divisional application of third generation: 420 €
  • Fee for a divisional application of fourth generation: 630 €
  • Fee for a divisional application of fifth or any subsequent generation: 840 €

If a parent as well as a divisional application is pending, the applicant may file a further divisional application based either on the parent or on the divisional application. If the further divisional is filed as a divisional from the parent application, no additional fee pursuant to Article 2 item 1b of the Rules relating to Fees becomes due.

Any of the above fees has to be paid in addition to the normal filing fee.

The amount of this fee is until the end of March 2014:

115 € (online filing) and

200 € (no online filing).

It has been increased with effect from April 1, 2014 to:

120 € (online filing) and

210 € (no online filing).

Finally, all accumulated annuities have to be paid for a divisional application, which were already due for the parent application. In a typical case, the accumulated annuities for a second or higher generation divisional application are significantly higher than the additional fee pursuant to Article 2 item 1b of the Rules relating to Fees.