Change of Rules Governing Divisional Applications at the EPO
The European Patent Convention permits the filing of divisional applications based on an earlier (“parent”) patent application. These divisional applications are entitled to the same filing date as the parent application. Presently, there is no time limit for filing a divisional application, other than that it must be filed while the parent application is pending.
New rules, due to come in to force on 1 April 2010, will place a time limit on the period for filing a divisional application. The time limit will depend on whether (a) the applicant files a divisional application voluntarily, or (b) the applicant files a divisional application in response to an objection that the parent application relates to more than one invention.
Voluntary Divisional Applications
If no non-unity objection is raised, a divisional application can be filed before expiry of twenty four months from the Examining Division's first communication in respect of the earliest application for which a communication has been issued.
Divisional Applications in Response to Non-unity Objections
A divisional application can be filed before the expiry of the twenty four months from any communication in which the Examining Division has objected that the earlier application does not meet the requirements of unity, provided it was raising that specific objection for the first time. In this context, the term “earlier application” refers to the application against which the non-unity objection is raised, rather than the earliest application in a series.
The new rules will apply to all applications pending at the date of its entry into force. Such applications will be granted a grace period of six months from the date of entry into force to allow the filing of divisional applications.
The previous practice of allowing “cascading” divisional applications (divisional applications which are themselves based on divisional applications) will continue. However, the time limit for filing such divisional applications will be subject to the new rules.
The twenty four month time limit for filing voluntary divisional applications will need to be borne in mind when planning a prosecution strategy. The new rules will force applicants to consider at an earlier stage which aspects of an application will warrant the filing of a divisional application. For applications that are pending at the time of entry into force of the new rules, urgent consideration will need to be given as to whether any divisional application is required.