The 1 April 2010 Amendments to EPO Divisional Applications
Posted on Monday, August 2, 2010
By Charl Goussard, NAIP Legal Research
Photo by tacoekkel
On 20 August 2009, the European Patent Office (EPO) announced its decision to amend the rules relating to Divisional Applications. Since the publication of this first notice, the EPO consequently issued a number of explanatory notices, amendments to its Guide for Examinations and even a presentation explaining the effects of the amendments of the rules – all of which might pose as an excess of information for the untrained eye.Photo by tacoekkel
This article attempts to serve as a basic summary, in plain English (where possible), for non-practitioners, of the amendments and various notifications issued by the EPO with regards to the 1 April 2010 amendments to the rules for Divisional Applications.
These amendments came into effect on 1 April 2010.
Divisional Application Requirements
Jumping right in, we'd like to look at the two basic requirements for a Divisional Application filed with the EPO:
1. The patent which is intended to be divided must still be pending.
This means that the earlier patent must have been filed, but not yet granted, withdrawn, or deemed withdrawn on the day the divisional application is filed.
2. The divisional application must be filed within one of the following periods:
a) For Voluntary Divisionals: within 24 months of the Examining Division's first communication (called an "office action" at the USPTO) of the earliest application for which a communication has been issued. Thus, in the case of a sequence of EPO divisional applications, the 24 month time window is calculated from the date of the first communication issued for the earliest application in the sequence. Notification of the search opinion does not constitute a "first communication", since it is not issued by the Examining Division. Furthermore, the substance of the first communication is irrelevant for the calculation of the time window.
b) For Mandatory Divisionals: within 24 months of any first non-unity of invention objection from the Examining Division . Thus, each time the Examining Division raises a non-unity of invention objection for the first time, it creates a NEW time window of 24 months in which the applicant can file a divisional application. Notification of Summons to Oral Proceedings, or the minutes of a telephone conversation with the examiner, can also count as a communication (provided that lack of unity was the basis of the objection).
However, an objection of lack of unity in a Search Opinion is not considered to be a communication from the Examining Division and will not start the time window for filing a divisional application.
Transitional Arrangements
Before 1 April 2010, a divisional application could have been filed without consideration of a time window.
However, as explained above, the April amendments brought about a change in the time allotted to file divisional applications.
To accommodate for the transition the EPO has created a six months buffer period beginning 1 April 2010. Up until 30 September 2010, applicants will be allowed to file divisional applications even though their time windows have expired before 1 April 2010. If a time window is still open on 1 April 2010, but expires soon afterwards, the EPO will allow filings of Divisionals up until 30 September even though the time window has closed prior to that date.
The important date to remember in this transitional stage is 30 September 2010!
As of the 1st of October 2010, the EPO will strictly apply the new time window for divisional applications.
Language
The divisional application must be filed in the language of the proceedings of the earlier (parent) application. If the earlier application was not filed in one of the official EPO languages (English, French or German), then the divisional application may be filed in the non-official language of the earlier application. However, a translation will then have to be filed within two months.
Non-compliance with time limitations
If a divisional application is not filed within the 24 months window period, the application will be considered withdrawn.
Further Processing will not be possible (Further Processing is a procedure whereby an applicant can apply for an extension of a time limit).
Re-establishment of rights is, however, still available as a means to remedy the failure to observe the 24 month time window—but only if the necessary extraordinary circumstances can be proven.
Non-compliance with the time limits set for divisionals can result in fatalities for some potentially valuable divisional applications. It is therefore suggested that all currently pending applications be reviewed in order to secure filing of divisional applications before the 1 October 2010 deadline.
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