The right to divide – EPO discards restrictions
Published on: 06 November 2013
by Dr. Christian Köster, Patent Attorney at Dennemeyer & Associates, Munich
With the Decision of the Administrative Council of 16 October 2013, the European Patent Office (EPO) decided to discard the former time restrictions for filing divisional applications to pending European patent applications. The pertinent revised Rule 36(1) EPC will enter into force on 1 April 2014, and it will apply to all divisional applications filed on or after that date. This regulation will therefore apply to any pending European patent application, irrespective of whether time limits under current Rule 36(1)(a) or 36(1)(b) EPC apply or have already expired.
A decisive word in this context is “pending”. A European patent application will be pending in the sense of the EPC on 1 April 2014, at least for all European patent applications
i) for which a Communication under Rule 71(3) EPC is issued on or after 21 November 2013, provided a reply is not filed earlier;
ii) which are refused by a decision issued on or after 21 November 2013, provided that decision is contested by a substantiated appeal;
iii) which are refused by a decision issued on or after 22 January 2014, even if no appeal is lodged.
For many other cases in which either a Communication under Rule 71(3) EPC or a decision to refuse the application has already been issued, there will be procedural options to keep an application pending until the revised regulation enters into force. Solutions for such situations can be tailored according to need.
The decision to discard the former impractical and unbalanced approach is much welcomed; there is however one drop of bitterness: in case of filing a divisional application out of a previous divisional application, an additional fee will fall due, the value of which is still to be determined by the EPO. In any event, the disappearance of former Rules 36(1)(a) and 36(1)(b) EPC is good news for all practitioners.
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