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Changes to time limit for filing EP divisional applications

By John Rule.

On 1 April 2014 the rules regarding filing divisional applications stemming from European Patent applications changed. The changes in the rules mean that decisions regarding divisional application strategy no longer need to be made early under the short-lived "two-year" rule that previously applied. 

 

Before April 2010, the EPC permitted the filing of a divisional application from a pending patent application (a “parent”) at any time up until (but not including the day of) publication of the grant of a patent.

Then, from 1 April 2010 the "two-year" rule came into effect, meaning that any divisional applications filed on the applicant's own initiative ("voluntary divisional applications") had to be filed within 24 months from the first communication issued by the EPO examining division in respect of the parent (i.e. the previous - or an even earlier application in case of a "chain" of applications).  Divisional applications could also be filed in response to a non-unity objection (“mandatory divisional applications”). Such divisional applications had to be filed within 24 months from the communication in which the relevant non-unity objection was first raised.

After three and half years of enduring the "two-year" rule, in October 2013 the Administrative Council, wisely decided that the complicated two-year rule was unnecessary and the rules were changed again. As such from 1 April 2010, it was back to the old tried and tested way. Once again, the EPC permits the filing of a divisional application from a pending patent application (a “parent”) at any time up until (but not including the day of) publication of the grant of a patent.

The EPO has however decided to levy an additional fee as part of the filing fee for divisional applications of second or subsequent generation. This means that the filing of divisional applications in respect of earlier divisional applications will be subject to an additional fee. The amounts of this fee grow progressively with each subsequent generation of divisional applications up to a certain level, becoming then a flat fee.

For more information about European patent application filing, please contact John Rule on: john.rule@coulsonrule.com.

This news item may contain information of general interest about current legal issues, but does not contain legal advice.