In April 2010, the European Patent Office brought into effect a change to Rule 36 EPC that significantly limited the flexibility for applicants to file European divisional patent applications. A divisional application is a type of patent application which contains subject matter from a previously filed application, and is generally used when the original application describes more than one invention, meaning the applicant is required to split it into separate applications for each invention.

Previously, the only requirement was that the earlier European patent application must still be pending. However, the EPO’s rule change meant that any divisional application must be filed within 24 months of an examination report, or of any communication in which the EPO raised a lack of unity objection. This was introduced to prevent patent applicants from filing cascading divisional applications, effectively stringing out proceedings on applications and keeping a pending application alive for years after the original filing date, and also to reduce the workload of the EPO.

Why has the EPO changed Rule 36

However, this rule change has proved unpopular with patent applicants, and has not worked as the EPO had hoped. Rather than filing fewer divisional applications, in the uncertainty created by the short 24 month deadline, applicants in fact have filed more, many of them unnecessarily.

Consequently, and after consultations between the EPO and the patent profession, the change to Rule 36 EPC has been repealed within just four years.

The new rule change comes into effect as of 1 April 2014. For any divisional applications filed on or after that date, the only requirement will be that the application to be divided must still be pending.

There is a new aspect to the forthcoming rule change, in that there will be an additional fee as part of the filing fee for second generation divisional applications and beyond. Also, this fee will increase with each subsequent generation, up to a certain (yet to be set) defined fee limit. This is the EPO’s new measure to try and deter patent applicants from filing cascading divisional applications, but without causing them to file unnecessary applications.

Any questions?

If you have any questions on this rule change, or would like any advice on this matter, then please contact us.