The IPKat's European patent attorney friend Kevin Cordina has asked him to give an airing to an idea concerning a great dodge to get around the new European Patent Office (EPO) divisional rules. He writes:
"The recently announced amendments to EPC Rule 36 [see earlier IPKat post and comments here] are intended to restrict the filing of 'abusive' divisional applications by restricting the periods during which they may be filed. This raises the fairly obvious question of how do we drag out the permitted periods to their maximum extent. Of particular interest is what to do with chains of divisional applications.
Rule 36(1)(a) refers to the 'earliest application', so the time limit in that article would not appear to start running again for each divisional in a chain. That is, all divisional applications must be filed within two years of the first exam report on the first application.
However, Rule 36(1)(b) is directed to the specific case of a unity objection, and refers to an "earlier application" (not "earliest"). This raises the possibility of extending the period for filing divisional applications well beyond the two years provided by Rule 36(1)(a):
A first application (application 1) is filed describing discrete inventions A, B, C and D, but only claiming A. This application proceeds merrily through examination and, two years after the first exam report, a divisional application (Application 2) is filed under Rule 36(1)(a) and claims are included to inventions A & B (probably with B appearing first in order to ensure that it is searched).
The first examination report on Application 2 will raise an objection under Article 82. This is the first time an objection under Article 82 has been raised, and therefore I have two years under Rule 36(1)(b) to file a further divisional application (Application 3). We are now four years from the first examination report on application 1.
In application 3, I include claims to C & B. The first examination report will raise an objection under Article 82. Rule 36(1)(b) provides two years from an Article 82 objection on "the earlier application". A clear reading of these words is that they refer to Application 3 and so there may two years from this objection to file a further divisional application (application 4).
However, Rule 36(1)(b) goes on to say "provided it was raising that specific objection for the first time". Whether I can file Application 4 thus depends on the meaning of these words:
• "specific objection" may be referring to an objection under Article 82 against a specific pair of inventions. In that case the rule provides two years in which to file a further divisional because the objection against C & B was raised for the first time in Application 3.
• However, "specific objection" may mean 'any objection under Article 82' (specific being used to contrast with, say, a novelty objection). In that case the first objection was in relation to Application 2 and there is not now a further opportunity.
If the first meaning is right, then the period could be stretched indefinitely by cunning drafting of claims to provoke unity objections against new combinations of claims in each divisional. If the second meaning is right, the period for filing a chain of divisionals may be stretched to at least four years from the first examination report on the first application. Of course, this only all works if you can actually find sufficient inventions lacking unity to provoke the objection.The IPKat says, if you have any bright thoughts on this, please let us all know.
One suspects that the EPO would like the second meaning to be right, but there is room for ambiguity there which seems certain to be tested. Or have I simply been staring at this too long and missed the entirely obvious reason why none of this will work?"
Roger the Dodger here