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News
27 March 2009
EPO Imposes Time Limit for Filing Divisionals
The EPO decided this week to impose time limits on when a divisional application can be validly filed. Divisional applications are the only form of "continuing prosecution" application in Europe.
The new deadlines
Under the new rules (which will come into force in April 2010) a divisional application will have to be filed within two years from either:
- the very first communication from the Examining Division in respect of the earliest application in a family; or
- any objection of lack of unity of invention (in respect of any application within the family).
Practical Effects
The imposition of a strict time limit is exacerbated by two other rule changes made in recent years:
- The very high excess claims fees for more than 15 claims (US$280 per claim, rising to US$700 for each claim after claim 50, beginning on April 1, 2009); and
- The prohibition on more than one independent claim per category (i.e. product or process).
In combination these factors often prevent an applicant from properly claiming in a single application all of the subject matter which might belong together. This forces more divisionals to be filed in Europe than elsewhere, and from next year a strict cut-off time limit will apply.
Reasons for the rule change
Under the current rules, one can file a divisional application as long as a parent case is pending (not yet granted or refused).
One can also file a sequence of divisionals, even if the earliest "grandparent" case has already been granted or refused.
The purpose of the new rules is to prevent what the EPO sees as "abusive" filing of divisionals, i.e. repeatedly refiling to avoid the effects of a refusal (or just before the patent grants a with a more limited claim scope).
Practitioners argued with the EPO that such abuses were rare, and that the real impact of the changes would be to penalise genuine applicants, but to no avail.
The EPO appears determined to simplify the examination procedure as much as possible as a way of reducing the workload, and is following the USPTO's lead in using rule changes to restrict options for applicants.
FRKelly will of course put appropriate safeguards in place to warn applicants of the deadline for each case when the changes come into force next year.
