When a patent application contains more than one invention, in order to protect each one it is usually necessary to divide the second and subsequent inventions out into separate ‘divisional’ patent applications which are treated as having been filed at the same time as the first ‘parent’ application.

In the past, a refused European patent application could effectively be kept pending indefinitely simply by filing divisional after divisional for many years, creating a smokescreen of legal uncertainty among the applicant’s competitors.

To prevent this, the EPO in 2010 introduced a strict rule requiring that all divisional applications (including divisionals of divisionals) must be filed within two years of the first examination report issued in respect of the earliest parent application (or, where the inventive concept to be divided out is first identified in a later examination report, within two years of that examination report).

While this rule helps to resolve the legal uncertainty around pending applications within a reasonable timeframe, it can also sometimes disadvantage applicants by forcing them to commit to the significant cost of filing one or more divisional application(s) before they are able to form a clear view of whether each divisional application is really necessary or justified. As a result, applicants now file many more divisional applications than they may previously have needed to.

The EPO is inviting comments from all parties regarding their contentious time limits for filing divisional applications. Does this issue positively or negatively affect your business activities and/or patent filing strategy?

You can have your say by responding to the EPO’s online survey.

The consultation closes on 5 April 2013.

Our view is that, while a time limit helps to prevent the commercial and legal uncertainty of indefinitely pending sets of patent applications, two years seems rather too short a time limit given that the examination process often has not advanced far enough within this timeframe to allow the applicant to properly judge whether divisional applications will be worthwhile.

If you would like to know more about how this issue may affect you, please speak to your usual contact at Wilson Gunn.