Is the era of cascading divisionals coming to an end?

In Insights, Uncategorized

6 October, 2009

Filing a divisional used to be a common procedure before oral proceedings as well as before grant of a patent. But for European applications this possibility has now been drastically restricted, and  new rules concerning divisionals (rule 36 EPC) will be in place from April 1, 2010.

Until recently there were considerable uncertainties regarding the application of the new rules, but the European Patent Office, EPO, has now elaborated on the interpretation.

According to the new rules a first communication from the examining division triggers a 24 months time limit for filing a divisional application, but it has been unclear what was to be regarded as a “first” communication. Often the search opinion from the search division has the same content as the first communication from the examining division, which is received subsequently. So would the search opinion from the search division count as a “first communication”? It is now established that this is not the case. It is only the first communication from the examining division that counts. The first communication is often a written statement of patentability under EPC art. 94(3), but it could also be a notification of summons to oral proceedings, the minutes of a telephone conversation or a personal interview.

Furthermore the parent application has to be pending at the time of filing the divisional. If a divisional of a divisional is to be filed, it is only the parent application that needs to be pending, but the 24 months are calculated from the date on which the Examining Division’s first communication was issued for the earliest application in the sequence, e.g. the grandparent application. This will probably mean a drop in divisionals upon divisionals which has been practiced under the old rules.

A new time limit can only be triggered if a non-unity objection is raised by the examiner and only if it is a new one, not if a previous non-unity objection is maintained.

If filing amendments introduces new independent claims covering other inventions than those already claimed, it triggers EPC rule 137(5), which says that you may not introduce unsearched subject-matter into the claims, which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept. Hence a unity objection will not be issued in this case and thus a new time limit will not be triggered.

For many companies it is crucial that divisional applications can be filed continuously as the product behind the patent application is developed and it is established which parts of the product are the important ones to protect.

So what can be done in order to comply with the rules as well as keeping ones options open?

It still remains to be seen, but at Awapatent we are, as always, looking into the options for handling the change of conditions in order to serve our clients the best way possible.

Charlotte Valentin, Associate

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