Restrictions in the possibilities for filing European divisional applications
April 2nd, 2010
Changes in the Implementing Regulations of the European Patent Convention
As of April 1, 2010 new Rules will enter into force limiting the possibility for filing divisional European patent applications. Under the current Rules, divisional applications can be filed relating to any pending earlier European patent application (which may be a divisional application itself). That is, the earlier application (the direct parent application) may not be refused, granted or deemed withdrawn.
After the entry into force of the new Rules, in general, the period for filing a divisional application is limited to 24 months from the receipt of the first substantive communication of the Examining Division in respect of the earliest application for which a first substantive communication is received. Hence, filing a divisional application is no longer allowed at any time during the pendency of the parent application. The European Patent Office calls a divisional application filed under these criteria a "voluntary divisional application".
If during examination, after the first communication, a non-unity objection is raised in a further substantive communication, a new time limit starts, which allows an applicant to file a divisional application within 24 months from that specific communication in which the non-unity objection was raised. Hence a divisional application can be filed within 24 months calculated from the receipt of a further communication, provided that this specific objection is raised for the first time. A divisional application filed under these criteria is called a "mandatory divisional application".
These new Rules will only apply to divisional applications filed on or after April 1, 2010.
In addition, if the 24 month time limits have expired before April 1, 2010 for any pending European application, a divisional application may still be filed within six months of that date, i.e. until October 1, 2010. If the relevant 24 month time limits are still running on April 1, 2010 they will continue to do so for not less than six months.
The Rules relating to the language requirements for filing a divisional application will also change on April 1, 2010.
Under the new Rules, a divisional application may be filed in the language of the earlier application (the parent application). If the divisional application is filed in a non-EPO language, a translation into the language of the proceedings for the earlier application has to be filed within two months from the filing of the divisional application.
The above is a brief summary of the new Rules. No rights can be obtained from this summary. In case you are of the opinion that the rule changes will affect your legal position or if you have any further questions with respect to these rule changes, please do not hesitate to contact us.