EPO to abolish time limits for filing divisionals

The Administrative council of the EPO decided on Thursday 17 October 2013 to revert to the former practice to allow the filing of divisionals as long as a patent application is pending.

As you know Rule 36 EPC entered into force on April 1, 2010 to basically restrict the filing of divisionals to 24 months from the first communication of the examining division (R.36(1)(a) EPC) or 24 months from a communication of new lack of unity (R.36(1)(b)) EPC. This change did not only put a huge monitoring burden on all parties without increasing legal certainty for third parties, but it also jeopardized the applicant’s rights to adequately protect its invention. For further details on the current situation please refer to our article here.

So, the Administrative Council fortunately decided to revert to former Rule 36(1) EPC which will read as follows:

R.36(1): The applicant may file a divisional application relating to
any pending earlier European patent application.

From April 1, 2014, a divisional may thus be filed for any pending patent application, be it a regular patent application or itself already a divisional. This will thus also apply to cases where there currently is no possibility to file a divisional because time limits of current R.36(1) have already expired, IF the application is still pending on April 1, 2014.

It has also been decided that for second or higher generation divisionals, increased fees would apply. Although the amounts of such fees have yet to be decided on, it seems that these costs will certainly not exceed the hidden monitoring costs of the current complicated regulation.

Office Freylinger will of course keep you current on further developments regarding the upcoming changes.