Sunset On Filing Divisional European Patent Applications

We draw your attention to new European Patent Office rule changes coming into force on 1 April 2010. You may have seen our Spring 2009 Patent issues newsletter that summarized these changes.

One of these changes will severely limit the flexibility to file European divisional patent applications. Clients need to review pending applications to look for any divisional applications that need to be filed before the new deadline. For the present, we are asking clients to consider 1 April 2010 as the date by which we will need instructions as to whether cases already examined need to be divided. (The transitional provisions give us until 1 October 2010, but with large numbers of divisional applications to be filed, we will need instructions well before that date.)

For a summary of what effect the new Rule has on strategy for prosecution of European patent applications at different
stages of procedure, we present a table here. Please feel free to contact us for any further explanation or for a cost estimate for dividing any particular European patent application.

Choose the claims of the divisional carefully

In view of the increased claims fees, we will frequently file new applications with only 15 claims. But Rule 137(5) EPC says an applicant cannot amend to unsearched subject matter unless it combines with the originally searched invention in a single inventive concept - i.e. unless there is something new in the original claims (and not just new, but the novelty must relate to what it is that the client later wants to claim). So applicants may well find themselves stuck with claiming what was set out in the divisional at the time of filing (or variations on what was claimed) and neither will it be possible to provoke a new period under Rule 36 for filing a divisional for subject matter beyond what was originally claimed.

Other important rule changes are summarized here.