The European Patent Office has decided to restrict the possibility for filing divisional applications. Under the current Rule 36 EPC a divisional application may be filed up to the grant of the parent application.
According to the adopted amendments to Rule 36 (1) EPC the applicant has a basic right to file one or more divisional applications up to two years from the date of the first communication from the EPO Examining Division. And if the EPO at a later stage raises an objection of lacking unity of invention that objection initiates a new two year term for filing divisional applications, provided lacking unity had not previously been raised.
A special “grace-period” applies to existing EP applications where the applicant may file divisional applications under the present rules until September 30, 2010.
An EP application may cover up to 38 countries so the consequences of the restricted possibilities for filing divisional applications are considered quite severe by many applicants, especially in technical areas like biotech.
Applicants have to decide whether a divisional application is to be filed as a matter of precaution. If the invention is considered important we recommend the filing of at least one divisional application.
Eva Carlsson, European Patent Attorney