EPO Rule Changes – Divisionals and Unity of Invention

The European Patent Office have recently announced some upcoming changes in practice before the European Patent Office, which are to do with divisional applications.

Divisional Filing Deadlines

Historically, European divisional applications could be filed at any time when the parent was pending. This was revised with effect from 2010 to introduce a two year time limit, measured in most cases from the first examination report, for filing a divisional application. The revisions were complex and unclear and were very unpopular with users. A consultation was launched, and now the EPO have decided to make two changes to the arrangements for divisional applications.

First of all, the two year time limit will be abolished and the historic situation will be restored. Rule 36(1) EPC will be amended to state “The applicant may file a divisional application relating to any pending earlier European patent application” (emphasis added).

Secondly, a new additional filing fee will be introduced for divisional applications whose parents are themselves divisional applications. The amount of this fee has not yet been announced, but it will grow progressively with each subsequent generation of divisional applications up to a certain level, becoming then a flat fee. This additional fee is designed to discourage applicants from keeping the same subject matter pending at the EPO for long time periods.

These changes will come into force on 1 April 2014, and will apply to any divisionals filed on or after that date. Further details can be found at the EPO website here.

Unity of Invention

Changes have also been announced to how the European Patent Office considers unity of invention in the case of International applications which enter the European regional phase of an International Patent Application.

If the EPO was not the authority that established the International Search Report, the EPO will prepare a supplementary search report. The applicant has an opportunity to file an amendment to the claims after entry to the European phase, but at present if the claims presented for search lack unity, the EPO will only search the first set of claims that is presented and any subject matter that is not searched can then only be covered by divisional applications (assuming that the unity objection is upheld).

However under the new rules, applicants will be given the opportunity to pay additional search fees to have searches drawn up for the previously unsearched subject matter. Once all the searches are received, the applicant can then in the examination proceedings choose any one of the searched inventions to be the subject of the application. The other inventions not chosen can then of course still be covered by divisional applications.

A similar change will also apply for European regional phase applications where the EPO did act as the International Searching Authority. In examination, the applicant will be given the chance to pay additional search fees.

Practice remains unchanged for “direct” European Patent Applications (those which are filed at the EPO and are not derived from an International Patent Application). Here, if a unity objection is raised at the search stage the applicant can pay additional search fees. Any unsearched subject matter cannot then be examined or accepted; however it is possible to protect such unsearched subject matter by filing a divisional.

These changes will come into force on 1 November 2014, and will apply to any Euro-PCT application for which a supplementary search report or examination report has not been issued at that date.

Further details can be found on the EPO website here.

What Next?

The change to the divisional deadlines is really good news, as the system in place for the last three years was horribly flawed. You may have a pending European Application where the old “two year” deadline for filing a divisional has expired. However, as a result of the rule change, a divisional can now be filed so long as the application remains pending.

Even if an application has recently been accepted or is accepted soon, it may be possible to prolong its pendency until 1 April 2014 if you need to take advantage of the new rule.

Alternatively, if an application has recently been abandoned through non-payment of the application maintenance fees it may be possible to revive it through the use of the six month fee grace period.

The change to the search procedures is also good news, especially for Euro-PCT applications which have their origins in countries like the USA, Japan, China or South Korea. Differences between local laws, PCT procedures and European practice as regards unity of invention can be dealt with in a more flexible manner.

Generally speaking, if filing in the European Regional Phase is anticipated it would be advisable to contact a European Patent Attorney prior to filing the PCT, to check that the proposed application structure would be compatible with European practice and to plan accordingly. However where this is not possible and there are complex unity of invention issues, the new procedures mean that subject matter can be assessed by the EPO promptly and without the need for filing wasteful divisionals.

The above notes are just a brief summary, and we would be happy to discuss the details of these changes with you.