European Patent Office Eliminates “Two-Year Divisional” Rule

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Office changes rules for filing divisional applications so they are no longer time barred.

On October 18, the Administrative Council of the European Patent Office (EPO) announced that the 2010 amendments to Rule 36 of the European Patent Convention will be repealed. Currently, Rule 36 mandates that divisional applications may only be filed within two years after the first communication from the Examining Division of the EPO. After this two-year window expires, it is no longer possible to file divisional applications, except in extraordinary circumstances. The repeal will permit the filing of a divisional application at any time during the pendency of a parent application, regardless of when the parent application was filed. The changes are effective as of April 1, 2014.

The Administrative Council of the EPO also announced that it will introduce progressive fees for divisional applications of divisional applications (so-called “second” or “later generation” applications) to reduce the number of applications. The precise details of the new fee will be announced at a later date.

Companies that have pending European applications and are considering filing divisional applications should maintain the pendency of these applications up to April 1, 2014 to provide applicants more flexibility in formulating a divisional filing strategy.