EPO to reverse restrictive stance on the filing of divisional applications
In an eagerly awaited meeting of the Administrative Council of the European Patent Organisation on 16th October, it was agreed that the controversial amendments made in 2010 to the rules governing the filing of divisional patent applications would be reversed and applicants would once again be allowed to file divisional applications at any point up to grant of the parent application [i]. It is envisaged that the amended rules will enter into force on 1 April 2014.
The current law dates back to 1 April 2010 when an amended version of Rule 36 EPC came into force which severely limited the time period in which an applicant could file a divisional patent application. Under the present legal regime, an applicant could easily find themselves in a position where they had a pending parent application but could no longer file divisional applications. For instance, because an examination report on the parent application had issued more than two years ago.
In agreeing to amend Rules 36, 38 and 135 of the European Patent Convention, the Administrative Council will once again enable applicants to file divisional applications at any point up to grant of the parent application. However, the divisional rules at the European Patent Office will not revert entirely to their pre-2010 form. The changes to Rule 38 allow for an additional fee to be charged for filing a divisional application from an application that is itself a divisional application, with the fee increasing with each subsequent generation of divisional applications up to a certain level. The details of this fee structure will be known once the Budget and Finance Committee has met later in October.
If you have any queries regarding this future change in law, contact one of our attorneys.
