On 1 April 2010, the EPO introduced a set of rules designed to restrict the flexibility with which applicants can file divisional applications.
In particular, these rules required that any and all divisional applications should be filed within two years of the first communication issued by the Examining Division in respect that patent family, or within two years of a later-issued non-unity objection.
However, although intended to increase certainty for third parties, these rules introduced a need for applicants to consider filing divisional applications before knowing the outcome of prosecution of the parent application, which in turn led to an increase in the filing of speculative applications.
EPO Rule Change - April 2014
Following a public consultation, the EPO has announced that the rules relating to the deadline for filing divisional applications will cease to have effect on 1 April 2014. From that point onwards, it will be possible to file a divisional application based on any pending European application (i.e. any application that is not refused, withdrawn or granted).
However, to discourage the filing of successive generations of divisional applications, the EPO has also announced that it intends to introduce new fees for the filing of divisional applications. The level of these fees is not yet known, but they will increase with each generation; for example, a divisional of a divisional will cost more than a first divisional.
- In cases where we have previously informed you that there exists a deadline for filing divisional applications that expires after 1 April 2014, this deadline can be disregarded.
- Where an existing deadline for filing divisional applications has expired (or will expire before April 2014), the possibility of filing divisional applications will be reactivated from
1 April 2014 onwards (provided that, on or after 1 April 2014, there will still be a pending European application upon which the divisional application can be based).
- It may therefore be advantageous to take steps to maintain the pendency of a current application until the rule change has taken effect.
- Conversely, in cases where it is your intention to file a divisional application off an existing divisional application and before the expiry of a current deadline, it appears that filing the application before the rule change will avoid the need for payment of additional fees.
Your usual Potter Clarkson representative will be able to advise you on how best to adapt your divisional application filing strategy, on individual cases, to account for this rule change.