It's Back to the Future for the EPO Divisional Application Deadline Rules

The EPO has announced that it is changing the EPO divisional application deadline rules to eliminate the current 24-month deadline for filing divisional applications, and permit the filing of a divisional application as long as the parent application still is pending. The change will apply to divisional applications filed on or after April 1, 2014.

The EPO Announcement

The EPO announcement was published on October 18, 2013, and simply states:

The Administrative Council has adopted in its meeting of October an amendment of the provisions of the European Patent Convention dealing with the requirements for the filing of divisional applications, namely Rules 36, 38, and 135.

The decision enters into force on 1. April 2014 and will apply to divisional applications filed on or after that date. It enables the filing of divisional applications as long as the earlier (parent) application is pending. The 24-month time limits for the filing of divisional applications are repealed.

In addition, there will be an additional fee as part of the filing fee for divisional applications of second or subsequent generation. This means that the filing of divisional applications in respect of earlier divisional applications will be subject to an additional fee. The amounts of this fee grow progressively with each subsequent generation of divisional applications up to a certain level, becoming then a flat fee.

Reopening The Window

Because the rule change applies to divisional applications filed on or after April 1, 2014, it appears that it will permit applicants to file a divisional application where the current 24-month period for doing so already has passed, as long as the parent application still is pending in April. Applicants who would like to take advantage of this change with a parent application that is close to allowance (or other termination of proceedings) may want to consider extending response deadlines and/or taking advantage of the EPO’s “further processing” provisions to prolong the pendency of the parent application through April 1.

Applicants interested in learning how this change impacts their European patent applications should seek the advice of European patent counsel.

A Welcome Change

This change likely will be welcomed by most applicants, who usually prefer to wait to file a divisional application until they know what subject matter will be allowed in the original application. In addition to spreading out patent costs, that timing often permits applicants to leverage strategies that were successful in the original application when prosecuting the divisional application. Further, this change will eliminate the need to file a “back up” divisional application when it is still possible that the original application will be allowed. The increasing fee structure is an interesting twist, but not unlike the USPTO fee structure that imposes escalating fees for subsequent Requests for Continued Examination (RCEs).