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3 November 2010

EPO clarifies divisional rules

In April 2010 the EPO introduced new rules providing a time limit for filing "voluntary" divisional applications, of 24 months from the first communication of the Examining Division in respect of the earliest application for which such a communication has issued.

This led to debate among experts as to what the "first communication" might be. While the EPO indicating that only substantive examination reports and Rule 71(3) communications (notifying intention to grant) would count, it had been noted that several earlier communications, prior to the first examination report, were signed on behalf of the examining division.

The EPO has now further amended Rule 36 to clarify that the time limit of 24 months runs only from either:

• an examination report (under Article 94(3), and Rule 71(1) and (2)), or
• a notification of intention to grant (under Rule 71(3)).

As previously, the deadline for all applications within a patent family are triggered by the first such communication to issue in respect of the earliest application within a family for which such a communication has issued. Filing a divisional application does not reset the clock.