• Sunset on filing Divisional European Patent Applications
    – New Rule 36 EPC and other rule changes

    We draw your attention to new European Patent Office rule changes coming into force on 1 April 2010 that will severely limit the flexibility to file European divisional patent applications. 

    You may have seen our Spring 2009 Patent Issues Newsletter that summarized these changes, available on this website by clicking here.  The rule changes has now been implemented and comes into force next year.  We are asking our clients to consider

    1 April 2010

    as the date by which we will need instructions as to whether European patent applications that have already examined need to be divided.  (The transition provisions give us until 1 October 2010, but we anticipate having to file large numbers of divisional applications by that date so we will need instructions well before the ultimate deadline.)

    Please feel free to contact us for any further explanation or for a cost estimate for dividing any particular European patent application.

    This and other rule changes are summarized in a PowerPoint presentation available for download here.

    The following table attempts to summarize what new Rule 36 of the European Patent Convention means in practice for applications at different stages of examination.

    Stage

    Action

    Comment

    Upon EP regional phase entry of a PCT application or after receipt of the European Search Report

    Does the International or European Search Report indicate lack of unity among the claims?

    Restrict the claims to just one invention.  Otherwise, the first Office Action will object to lack of unity and the clock will start for all later divisionals.  
    If a later divisional is filed with multiple inventions there will be an objection, but it will be the first such objection from the Examining Division, so the clock will restart.

    Before examination

    No pressing action (assuming there is no lack of unity – see above)

    Please instruct whether we are to press the European Patent Office to know when we can expect examination to begin.  Accelerating examination brings forward the deadline for divisional applications.

    After the first Office Action

    The 2-year clock has begun

    When considering how to reply to the Examiner, consider all possible divisional applications at this time. 
    Also consider carefully the dependent claims to be sure that anything to be claimed later is present in the claims.  This is the only opportunity to amend as of right.

    Within 2 years of the first Office Action

    File at least one divisional application for:

    • any other inventions that have been searched
    • any subject matter to be claimed that has not been searched

    There are strict limitations against amending the existing claims to features from the description that were not searched.
    There must be some feature of the original claims that is new and inter-relates with the feature(s) to be added from the description.

    After expiry of the 2-year period under new Rule 36

    A divisional application can only be filed if there is a new lack of unity objection in the pending application

    Any  amendment is at the discretion of the Examiner.  It may be possible to force him or her into raising a new lack of unity objection, but only if it is based on the existing hierarchy of claims - not by introducing new subject matter from the description.

    Following receipt of text intended for grant

    Review the allowable claims carefully. 

    • Do they include unnecessary limitations?
    • Do they cover all aspects of the invention (transmitter/receiver; method/use; product/diagnostic or other kit of parts, etc.)?

    There is still an opportunity to ask the Examiner to remove limitations or add claims.  Once the patent is granted it is too late to file any divisional applications.