Divisional applications under the European Patent Convention


Divisional applications under the European Patent Convention

In the procedure before the European Patent Office (EPO), divisional applications can be filed under Article 76 EPC. Such a divisional application, sometimes called European divisional application, is a new patent application which is separate and independent from the parent application, unless specific provisions in the European Patent Convention (EPC) require something different. [1]

"The procedure concerning the divisional application is in principle independent from the procedure concerning the parent application and the divisional application is treated as a new application.... Although there are some connections between the two procedures (e.g. concerning time limits), actions (or omissions) occurring in the procedure concerning the parent application after the filing of the divisional application should not influence the procedure concerning the latter...." [2]

The practice relating to the filing of divisional applications under the EPC was clarified by the Enlarged Board of Appeal of the EPO in June 2007. The Board held that a divisional application which on filing contained subject-matter extending beyond the content of the earlier application as filed could be amended later to remove the deficiency, even at a time when the earlier application is no longer pending.[3]

Contents

Background

The possibility to file a divisional application is provided in many patent systems and is guaranteed by Article 4.G. of the Paris Convention for the Protection of Industrial Property of 1883, to which 173 countries are Contracting Parties.[4] As to the nature of a divisional application, some basic characteristics are as follows:

"A divisional application is an application which derives from an earlier application. It is filed after the earlier application (usually some years later), but keeps the same filing and priority dates as the earlier application. That way the divisional is not affected in terms of its patentability by any publications which occur between the filing of the earlier application and the filing of the divisional. The earlier application is often referred to as the "parent"."[5]

Time limit for filing a divisional application

Previously, a divisional application could be filed based on any pending earlier European patent application.[6] The conditions for filing divisional applications regarding the time limit to be met have however been modified several times since the entry into force of the European Patent Convention in the 1970s,[7] and changed again on April 1, 2010. [8] What has not been changed however is that a divisional application can by no means be filed after grant of a European patent, i.e. based on a European patent. A divisional application can only be filed based on a pending European patent application, but, currently, not based on any of them.

Furthermore, it was held in Board of Appeal decision J 18/09 that a divisional application cannot be validly filed based on a PCT application before entry into European regional phase,[9] as later confirmed in Enlarged Board of Appeal decision G1/09.[10] In other words, "a Euro-PCT-application not having entered the European phase is not a pending earlier European application in the sense of Rule 36(1) PCT".[11] This contrasts with the situation in the United States, as laid out in the U.S. Manual of Patent Examining Procedure (MPEP).[12]

Situation prior to April 1, 2010

Prior to 1 April 2010, it was only required that the parent application be pending at the time the divisional application is filed.[6] A divisional application of a European patent application could be filed for any pending application [13] up to the day preceding the mention of grant of the European patent, but not including the date of grant. [14]

New rules as of April 1, 2010

As of April 1, 2010,[15]

"divisional applications on the applicant's own initiative (so-called voluntary divisional applications) will need to be filed within a period of two years from the first communication by the EPO examining division in respect of the parent (i.e. the previous) or an even earlier (in case of a "chain" of applications) application." [8]

Rule 36(1) EPC has been amended to read as follows:[16]

"(1) The applicant may file a divisional application relating to any pending earlier European patent application, provided that:
(a) the divisional application is filed before the expiry of a time limit of twenty-four months from the Examining Division's first communication in respect of the earliest application for which a communication has been issued, or
(b) the divisional application is filed before the expiry of a time limit of twenty-four months from any communication in which the Examining Division has objected that the earlier application does not meet the requirements of Article 82, provided it was raising that specific objection for the first time."

New Rule 36(1)(a) introduces a time limit for voluntary division of the parent application, while Rule 36(1)(b) provides a time limit for mandatory division of the parent application in case of a lack of unity under Article 82 EPC.[17] "Mandatory" in that sense means that, in order to cover each of the non-unitary inventions (i.e. the inventions that are non-unitary in relation to the invention which will be the subject of the parent application), one or more divisional applications need to be filed. However, if the applicant decides not to seek patent protection for the non-unitary inventions, no divisional applications need to be filed.

In a decision dated October 26, 2010, the Administrative Council further specified, or clarified,[18] that "the Examining Division's first communication" referred to in Rule 36(1)(a) EPC had to be a communication under Article 94(3) EPC, and Rule 71(1) and (2) EPC, or Rule 71(3) EPC.[19]

Further requirements

European divisional applications must be filed directly or by post with one of the filing offices of the EPO, i.e. at the European Patent Office at Munich, The Hague, or Berlin.[20] It may also be filed using the so-called epoline online filing software. The filing of a European divisional application with a national authority (such as a national patent office) has no effect in law. [21]

References

  1. ^ Decision G 1/05 of the Enlarged Board of Appeal of the EPO, Reasons 3.1 and 8.1.
  2. ^ Opinion G 4/98 in point 5 of the Reasons, cited in decision G 1/05 of the Enlarged Board of Appeal of the EPO, Reasons 8.1.
  3. ^ Decisions G 1/05 and G 1/06 of the Enlarged Board of Appeal of the EPO.
  4. ^ World Intellectual Property Organization (WIPO) web site, Contracting Parties > Paris Convention (Total Contracting Parties : 173). Consulted on June 20, 2010.
  5. ^ "Divisional applications at the EPO" (by Peter Watchorn) in Patent Information News 2, June 2010, pages 4–6.
  6. ^ a b Rule 36(1) EPC
  7. ^ CA/145/08, Munich, 10.10.2008, SUBJECT: Divisional applications, SUBMITTED BY: President of the European Patent Office, ADDRESSEES: 1. Committee on Patent Law (for opinion) 2. Administrative Council (for decision), pages 2-3 "Section III. Evolution of the Implementing Regulations Concerning Divisional Applications"
  8. ^ a b EPO web site, Time limits to be introduced for divisional applications, News, 3 April 2009. Consulted on October 24, 2009.
  9. ^ Decision J 18/09 of the Legal Board of Appeal 3.1.01 of 1 September 2010 (to be published in the EPO Official Journal).
  10. ^ Decision G1/09 of September 27, 2010, point 3.2.5.
  11. ^ Decision J 18/09, reasons 16, second paragraph.
  12. ^ MPEP 1895 "A Continuation>, Divisional,< or Continuation- in- Part Application of a PCT Application Designating the United States [R-2]".
  13. ^ Rule 36(1) EPC, formerly Rule 25(1) EPC 1973.
  14. ^ Decision J 7/04 of November 9, 2004, Reasons 3.
  15. ^ Decision of the Administrative Council of 25 March 2009 amending the Implementing Regulations to the European Patent Convention (CA/D 2/09), Article 2.1. The decision is also published here, in the EPO Official Journal 5/2009, p. 296.
  16. ^ Decision of the Administrative Council of 25 March 2009 (CA/D 2/09), Article 1.1.
  17. ^ Notice from the European Patent Office dated 20 August 2009 concerning amended Rule 36(1) and (2) EPC (European divisional applications) and consequential amendments to Rules 57(a) and 135(2) EPC.
  18. ^ (French) Laurent Teyssedre, Nouvelle règle 36 et JO d'octobre, Le blog du droit européen des brevets, November 5, 2010. Consulted on November 7, 2010.
  19. ^ Decision of the Administrative Council of 26 October 2010 amending Rule 36 of the Implementing Regulations to the European Patent Convention (CA/D 16/10)
  20. ^ Rule 36(2) EPC
  21. ^ Guidelines for Examination in the EPO a.iv.1.3.1

External links

  • Article 76 EPC
  • Rule 36 EPC
  • Guidelines for Examination in the EPO a.iv.1 : European divisional applications (in part A: Guidelines for formalities examination)
  • Guidelines for Examination in the EPO c.vi.9.1 : Divisional applications (in part C: Examination procedure)
  • Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (sixth edition 2010), iv : Divisional applications

Further reading

Administrative Council's documents:

Others:


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