The European Patent Office (EPO) has taken the pragmatic decision to amend Rule 36 EPC governing the deadline for filing divisional patent applications. After a period of consultation with users and interested parties it was concluded that the existing law is viewed negatively by users and has not met the objectives of the EPO.

Amended Rule 36 EPC

Amended Rule 36 EPC will come into effect on 1 April 2014. The revision to Rule 36(1) allows the filing of divisional applications as long as an earlier application is still pending, that is to say before the ‘parent’ application is granted, refused or withdrawn. Therefore, divisional applications can be filed up to the day before grant of the original application. In the case of refusal, divisional applications can be filed up to two months after issue of the Decision to Refuse. This will assist applicants in that the need to file precautionary divisional applications before Oral Proceedings will be obviated. In cases where the deadline to file any divisional application according to pre 1 April 2014 rules has expired, the applicant will again have the opportunity to file one or more divisional applications while the original application remains pending.

The amended Rule will be welcomed by many applicants who will now have the opportunity to file divisional applications at a time when their interest in an invention is more certain, when the viability of the invention is better established, and/or after any potential late prior art has been identified. The reduction in the need to file a ‘precautionary’ divisional application prior to proceedings in which an application might be refused should reduce the costs to applicants. However, applicants should be aware that the EPO has introduced additional fees payable on filing new divisional applications of second and subsequent generations. These fees are intended to discourage long chains of divisional applications filed by applicants to prolong pendency periods. The sum payable is however intended to be not so prohibitive as to affect legitimate filing strategies.

We believe that our clients will benefit greatly from this change in the law. However we would urge applicants to review their filing strategies and consider if any second or subsequent divisional patent applications are required.

Practical Considerations

We would recommend applicants review their pending European patent applications and consider whether any divisional applications may be required in cases where the deadline has already expired under the current system.

Applicants should also consider whether any second or subsequent divisional patent applications are required. We would recommend that these are filed as soon as possible to avoid paying increased fees.

Further information and advice in respect of any of these points can be obtained by contacting any of our attorneys or by emailing docketing@secerna.co.uk.