EPO’s Attempts to Reduce the Number of Divisional Applications Was Unsuccessful

Authors: Birute Dauderiene, a patent attorney-at-law at METIDA, Dr Jacekas Antulis, an associate partner, the Head of the Patent Division at METIDA 

Image courtesy of_jenni from the block_flickr comAfter an attempt to reduce the number of divisional applications by shortening the filing deadline up to 24 months the European Patent Office (EPO) has decided to go back to the old regime. The earlier Rule 36 of the European Patent Convention (EPC), which had been in force until 2010, allowed an applicant to file a divisional application for as long as the first application was pending. The EPO noticed that the patent applications began to grow and multiply. In other words, a number of divisional applications eventually became parent ones which again generated more divisional applications. Consequently, it became unclear what the final claims of a European patent would be. This information is important when fighting against competitors. Hence, the imprudent use of the opportunity to file divisional applications evoked the new amendments of the Rule 36 (EPC).

Under the current Rule 36, a divisional application can be filed within 24 months after the first communication with the Examining Division. However, the rule amended in 2010 has caused a lot of confusion in the calculation of time limits. Due to the relatively short term the applicant can file a divisional application of a questionable patentability which has not undergone the examination. Statistics show that the number of divisional applications has not decreased. Moreover, the Rule is likely to have lead to the frequent occurrences of hastily filed divisional applications.

Thus, the EPO has decided to rescind the deadline of filing the divisional patent application. The newly amended Rule 36 (EPC) will enter into force on 1st April 2014 and will enable the filing of divisional applications as long as the earlier application is pending. The changed Rule will be applied to all applications which are filed or examined on 1st April 2014. In addition, the EPO amended Rule 38 (EPC) expecting to avoid the long chain of parent-divisional applications. According to this rule, a divisional application fee will grow progressively with each subsequent generation of filed divisional applications. The success of the renewed Rules 36 and 38 will most likely depend on the fees, which will be announced before the new amendments take effect.

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