Originally published June 1, 2009
Recently, the European Patent Office (EPO) announced changes to
the rules of the European Patent Convention (EPC) as part of the
EPO's initiative to speed up patent examination. The new EPC
rules, which will be effective on April 1, 2010, will drastically
restrict how a patent applicant is able to file divisional patent
applications and will increase the patent applicant's
obligations to provide information to the EPO during patent
More specifically, these rule changes implement: (1) time limits
for filing divisional European patent applications; (2) compulsory
responses to European search reports and written opinions of the
EPO acting as the International Searching Authority (ISA) in
European patent applications; (3) a requirement that the basis in
the original text of a European patent application be provided for
all amendments; (4) a requirement, for European patent applications
containing more than one independent claim in the same category,
that patent applicants identify which claims are to be searched;
and (5) a requirement, for claims the EPO considers too broad or
unclear on which to carry out a meaningful search, that the patent
applicant indicate which subject matter should be searched.
Time Limits For Filing Divisional Applications
Currently, divisional European patent applications may be filed
up until the granting of a parent patent application. Cascading
divisional European patent applications may be filed indefinitely.
These current provisions are analogous to U.S.
"divisional" and "continuation" application
Under the new Rule 36 EPC, patent applicants will no longer be
able to file an unlimited number of cascading divisional patent
applications while a European patent application is pending. Under
the new rule, if there is not an objection for lack of unity of
invention in the European patent application, the time limit for a
voluntary filing of a divisional patent application is two years
from the issuance of the first examination report on the parent
application in the patent family. If there has been an objection
for lack of unity of invention, then the time limit for a mandatory
filing of a divisional application is two years from the objection
for lack of unity of invention.
Though the new rule will be introduced April 1, 2010, there will
be a six-month transitional period until October 1, 2010. During
the transitional period, divisional applications may be filed...