1. With effect from April 1, 2010, the Implementing Regulations to the EPC were amended in the framework of the EPO’s “raising the bar” initiative, restricting the filing of divisional applications to narrow time limits, a requirement unknown in any other modern patent system. Representatives of the interested circles raised strong objections in the legislative process which turned out to be in vain. The implementation of the new system showed that the objections made were fully justified and that establishing a reliable system for monitoring these time limits was hardly possible (see Wegner/Teschemacher in epi Information 2/2010, 53). In reaction to such complaints, the EPO took certain administrative measures including the indication of the first examination report triggering the time limit for voluntary division (OJ EPO 2011, 273). Apart from the fact that these measures turned out not to be reliable, they did not touch the fundamental problem of the new system, i.e. the need for the applicant to make a decision on the filing of a divisional application before having a sound basis for such a decision because he does not yet know the result of the proceedings in the parent application.
2. The continuing complaints of the users prompted the EPO to assess the impact and effectiveness of the time limits. It turned out that they resulted in a wave of more than 20.000 divisional applications in the year following the entry in force of the amendment. Even in the steady state, the number of divisional applications increased due to the precautionary filing of divisionals. In March 2013, a user consultation was started which had the foreseeable result that the users favoured the reinstatement of the previous Rule 36 EPC and the EPO made a corresponding proposal which was discussed in September 2013 in the Patent Law Committee of the Administrative Council and adopted by the Council on October 16, 2013.
3. Rule 36 (1) EPC as amended reads as Rule 36 (1) EPC in the version applicable before April 1, 2010:
The applicant may file a divisional application relating to any pending earlier European patent application.
The amendment will enter into force on April 1, 2014 and will be applicable to divisional applications filed on or after that date.
4. In accordance with the Guidelines for Examination, 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 2 months for filing the appeal.
5. One of the aims of the introduction of the time limits in 2010 was to prevent a misuse of divisional applications by filing endless sequences of divisional applications keeping the subject-matter pending although examination in preceding applications had negative results. In order to impede such misuse, a new paragraph 4 of Rule 38 EPC provides for a fee for a divisional application filed in respect of a parent application which is itself a divisional application (divisional of the second generation). It is foreseen that the respective fee will be progressive for each further generation of a divisional application. However, the amounts foreseen are not deterring compared to the renewal fees which have to be paid for such applications in accordance with Rule 51 (3) EPC.
6. The amendments have the following practical consequences:
- The lapse of the time limits for fi ling a voluntary or obligatory divisional application in Rule 36 (1) a) or b) EPC in its present version has only negative consequences for an application which is no longer pending on April 1, 2014. For an application pending on that date, a divisional application may be filed even if the time limits of 24 months have already lapsed before.
- In the communication under Rule 71 (3) EPC (intention to grant), the applicant is given a non-extendable time limit of 4 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 6 weeks. Thus, an applicant receiving a Rule 71 (3) communication in the course of December 2013 and using the full time period of 4 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.
- If there is a possible interest in filing a divisional for an application in which the time limits pursuant to Rule 36 (1) a) or b) EPC in its present version have lapsed and a Rule 71 (3) communication has been received b efore December 2013, there are means for keeping the application pending by requesting amendments or by using further processing. The proper handling of the application should be decided on the basis of the facts of the individual case.