European Patent Office Introduces Time Limits For Filing Divisional Applications

Profession:Harrison Goddard Foote

Article by Chris BensonOn 26 March 2009 the Administrative Council of the EuropeanPatent Office (EPO) voted to introduce a time limit to restrict thefiling of divisional European patent applications. The restrictiontakes effect on 1 October 2010 and applicants are recommended tocomplete a review of their pending European patent applicationsbefore then.Currently, an applicant for a European patent may file adivisional application up until the grant of a parent application.Cascading divisional applications may be filed indefinitely,potentially allowing an applicant to maintain a series of pendingdivisional applications until 20 years from the filing date.However, the EPO has now decided to introduce a time limitrestricting the filing of divisional applications. The time limit,defined by an amended Rule 36 EPC, runs from (a) the issuance of afirst communication from the Examining Division in respect of theearliest application for which a communication has been issued, or(b) any communication from the Examining Division in which anobjection of lack of unity is raised, provided that thecommunication was raising that specific objection for the firsttime. These two deadlines are presented as independent of eachother.The first part of Rule 36 sets a time limit on the voluntaryfiling of divisional applications i.e. where no disunity objectionhas been raised. The time limit of two years is determined by afirst application in a sequence of divisional applications andapplies to all applications in the sequence. For example, where adivisional application is filed from a parent application andsubsequently a 2nd generation (grandchild) divisional applicationis filed from the divisional, the two year time limit is determinedfrom the issuance of an Examination Report on the parentapplication. Concerns have been raised by some that the expression"first communication from the Examining Division" couldinclude the written opinion which is included in extended searchreports; in our opinion this is unlikely and it is not suggested inthe commentary which the EPO submitted to the AdministrativeCouncil.The second part of Rule 36 sets a time limit of the mandatoryfiling of divisional applications necessitated by the raising of alack of unity objection. The time limit is determined from the datea lack of unity objection is raised for the first time. Forexample, if new prior art is cited late in the examinationprocedure which causes a posteriori lack of unity objection, thenthe...

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