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Changes in European Divisional Patent Applications

An amendment to article 36 of the Implementing Regulations to the European Patent Convention was approved by the Administrative Council of the European Patent Office (EPO) in a meeting held on 16 October 2013. This article refers to the conditions for filing divisional patent applications.

Historically, it was possible to file divisional patent applications while that application for the previous patent was pending approval. On 1 April 2010, a major amendment came into force that additionally introduced a deadline of 24 months for filing divisional applications, counting from the first communication issued by the Examining Division (normally an official action) or from the first lack of unity of invention objection issued by the same division.

The deadline was introduced to reduce the indiscriminate use of divisional applications, especially those presented the day before a hearing, in which the patent could be rejected, in order to indefinitely extend its processing time and, thereby, legal uncertainty for third parties.

However, after the coming into force of the deadline, various problems have come to light:

Firstly, the number of divisional applications has grown, contrary to what was hoped, due to the precautionary filing of divisional applications just before the expiry of the 24 months deadline. This generates more expenses for the applicant, legal uncertainty for third parties and additional workload for the EPO.
Secondly, the complexity of monitoring the time periods imposed by the deadline, both for the applicant and for third parties, has been demonstrated. In fact, in March 2013, a public consultation was opened to obtain user opinions; the majority of users disapproved of the deadline.

In view of the problems caused by the change made in 2010, the recently approved amendment eliminates the deadline for filing divisional applications, retaining the single existing condition that the previous patent application must be still pending. Furthermore, an additional filing fee for divisional applications of the 2nd or subsequent generation (those where the previous application is already a divisional application) is introduced. The fee is progressively increased for each generation of divisional application in order to try to reduce the filing of long sequences of divisional applications. It is hoped that these changes will encourage more rational use of divisional applications.

The new amendment will come into force on 1 April 2014, applying to all divisional applications filed from that date.

Ricardo Ontañon