• EPO Determined to Stamp out “Abuse”

    The European Patent Office appears convinced that applicants are filing divisional patent applications in circumstances the office considers “abusive” and that the only way to address the perceived problem is by a change of the Implementing Regulations. According to submissions by the President to the Administrative Council, there is a trend for divisional applications to be used to “duplicate” proceedings by filing an identical divisional application the day before oral proceedings, and pursuing the divisional application instead of the more proper course of appealing a subsequent negative decision. The President, after consultation, proposed rule changes to the Council, which were adopted on 25 March 2009.

    The EPO’s Problem

    The President’s submissions (dated 10 October 2008) set out that she perceives two problems with the present freedom to file divisional applications right up to the day of a hearing. First, the work of the office is duplicated if the divisional is identical to the parent, and second, the applicant’s freedom creates legal uncertainty for third parties. The Enlarged Board of Appeal (in decisions G1/05 and G1/06) has described the situation as “unsatisfactory” and has said that if administrative measures (speeding up examination of divisionals) are not adequate, a rule change might be necessary. Much has already been written by CIPA and others about why the problem is more anecdotal than actual and why administrative measures alone should suffice, but that battle may be lost, so let us instead look ahead.

    The Rule Change

    The new Rule provides for a sunset period after which no further divisional applications can be filed. The period is 24 months from the Examining Division’s first communication in respect of the earliest application for which a communication has issued (i.e. from the first communication in the parent application unless exceptional circumstances mean that a divisional is examined first).

    The rule is a compromise. Neither does the sunset coincide with the date of response to the first communication from the Examining Division (as set out in the original Implementing Regulations over thirty years ago), nor is discretion required (as was also the case, with all the associated disputes over fair exercise of discretion). Instead, a 2-year clock begins. It is a burdensome compromise, but there is an exception. The exception is where the Examining Division raises a lack of unity objection for the first time (in the parent or any of the divisionals).

    In such a case, the clock re-starts from the date of the communication in which the non-unity objection is first raised. (UK practitioners will be familiar with such a regime from earlier but harsher provisions of the UK Patent Rules.)

    Don’t Count on Restarting the Clock Applicants should not rely on re-starting the clock after the initial 2 years have run. Rather, it will be wise to consider all possible new and inventive subject matter, and file one or more divisional applications with all the envisaged claims within the 2-year period.

    Careful planning of cascading dependent claims (in the parent and again in the first divisional) may allow an applicant to make full use of the exception to restart the clock. If dependent claims are written to give meaningful fall-back positions, the Examining Division can be provoked into raising a non-unity objection, even if 2 years have passed since commencement of examination, thereby opening the possibility of filing a late divisional. (Note that a non-unity objection cannot be provoked merely by adding new claims, because Rule 137(4) prohibits amendment to unsearched subject matter that does not share unity of invention with the already searched claims.)

    But this raises a question. If the search examiner has done a thorough job, he or she will have raised a posteriori objections to the dependent claims (i.e. objections that, with the benefit of the search results, the features of the independent claims are shown to lack novelty or inventiveness). Does such an objection start the 2-year clock? An applicant can quite properly reply that the independent claims (or the unifying dependent claims) are indeed new and inventive, but any reply, even a rebuttal, starts the clock. Recently we have noticed very long gaps between communications that would eat up the 2-year period. The concern is raised that one might make such a reply and be forced to file the divisional application before knowing whether the argument is persuasive.