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12/01/2010
EPO divisional applications
EPO Divisional Applications: New Rules
Under the current EPO rules, divisional patent applications may be filed at any time while the earlier application (the “parent”) is pending. As from 1 April 2010, new rules will enter into force, introducing further time limits on the filing of divisional applications.
The new rules allow the filing of a divisional application based on a pending European application provided that either the period for “voluntary division” or any period for “mandatory division” has not expired.
The period for “voluntary division” is 24 months from the Examining Division's first communication in respect of the earliest application for which a communication has been issued. A search opinion accompanying a search report does not trigger this period. The 24 month period commences with the first unfavourable examination report, or the communication provisionally allowing the application under Rule 71(3) EPC. The reference to the “earliest application” means that this communication could have been issued on a grandparent or great-grandparent application.
The period for “mandatory division” is 24 months from any communication in which the Examining Division has objected that the claims of the earlier application lack unity of invention, provided that specific objection was being raised for the first time. Usually such an objection will appear in the first communication from the Examining Division, so that this period will expire at the same time as the period for voluntary division. However, the lack of unity may have been introduced into the claims after examination commenced.
“Further processing” under Article 121 EPC is not allowed for these new periods. However, the so-called “ten-day rule”, Rule 126(2) EPC applies, deeming the periods to commence ten days after the date of the relevant communication.
Transitional provisions: the new rules apply to cases pending on 1st April 2010, and if the periods for voluntary or mandatory division in such applications have expired before 1st October 2010, and the application is still pending, divisional applications can be filed up to that date. 1st October 2010 will thus be the deadline for filing many divisional applications, and we recommend filing in good time before that date to avoid the rush.
Where it is thought that a particular application may require the filing of more than one divisional application, the required number of divisionals should be filed before the end of the period for voluntary division.