Our colleagues at J.A. Kemp in the United Kingdom have advised us that they have received advance notice that the administrative council of the European Patent Office (EPO) has voted to amend Rule 36 EPC to remove the controversial 24-month time limit within which European divisional applications may be filed. The sole criterion set forth in amended Rule 36(1) EPC will be that the application to be divided must still be pending. In practice this means that any case that is not granted or finally refused can be divided once the new rule comes into force.
The amended rule is set to come into force on 1 April 2014.
Under the current rules, which came into force 1 April 2010 for applications filed after that date provided that applicants may divide their European patent application within 24 months of the first office action (or notice of allowance) or within 24 months of a new lack of unity objection being raised.
The amended rule will come into effect for all divisional applications filed on or after 1 April 2014, and so in some cases will serve to reopen previously closed divisional application filing windows. Applicants wishing to file a divisional application in a case where the term under existing Rule 36 has expired may now wish to keep their application pending at least until 1 April 2014 and file one or more divisional applications then.
Simultaneously with this rule change, the EPO intends to introduce a new additional filing fee that applies to divisional applications of second generation or higher. Although the level of the fee has not yet been set, it is expected to be of a low to moderate level, in the range of 200-800 Euros, and is expected to increase with successive generations.
Patent Docs thanks Tim Duckworth of J A Kemp for alerting us to this recent development. Readers wishing further clarification can contact J A Kemp directly at www.jakemp.com.
For additional information regarding this and other related topics, please see:
• "EPO Proposal Would Remove Time Limit for Divisional Filing," September 13, 2013
• "Changes Coming to Divisional Application Practice in Europe," March 27, 2009