Breaking The Shackles – Changes To Divisional Application Practice In Europe

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From 1 April 2014, the 24 month deadline to file a divisional patent application in Europe will be abolished. From this date, divisional applications can be filed at any time provided the parent application has not proceeded to grant.

The European Patent Office (EPO) has announced changes to filing procedures for divisional applications in Europe. Previously, a divisional patent application could only be filed within 24 months of the date from when the Examining Division issued a first communication in respect of the earliest application or from when a unity objection was raised.

This provision, introduced in April 2010, was an attempt to prevent applicants from filing divisional applications which duplicated and prolonged the pendency of subject matter before the EPO. It has proven, however, to be quite problematic for many applicants as it is often unclear after only 24 months whether a divisional application is required, particularly in view of the lengthy duration of examination before the EPO.

Acknowledging this, the EPO have now announced the removal of the 24 month deadline to file divisional applications. A divisional application can now be filed at any time provided that the earlier (parent) application is still pending. The new provisions take affect from 1 April 2014.

The new rules are non-restrictive and apply to all applications. This means that a divisional application can be filed from any application that is pending on 1 April 2014, regardless of whether the 24 month deadline had previously expired. In some circumstances, it would therefore be advantageous to prolong prosecution of the parent application to ensure its status is still pending by this due date, thereby renewing the opportunity to file a divisional application.

To discourage unnecessary divisional applications being filed, an additional fee will be required for second or higher generation divisional applications (i.e. divisional applications filed from other divisional applications). The fees will grow progressively with each subsequently filed divisional application before reaching a plateau where a flat fee will apply. This fee has not yet been set but it is expected to be relatively small in comparison to the other payable official fees, such as the back payment of renewal fees.