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Tuesday, 14 April 2009

A dodge for the divisionals?

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.

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?"
The IPKat says, if you have any bright thoughts on this, please let us all know.

Roger the Dodger here
Roger Dodger here
Another great Dodge here


Filemot said...

Is it too much to ask that claims be drafted to the inventive contribution made by the client? Patent prosecution is not a game for lawyers. Its about ensuring a grant of fair monopolies that will encourage innovation and benefit the public in a reasonable balance. The EPO is not the enemy.

Anonymous said...

But Filemot, technical developments happen during the lifetime of an application's prosecution and product change, as do business needs. This often makes divisional applications a vital tool to protecting business interests.

The lawyers are not the enemy either. It's about time the EPO and attorneys rebuilt their "business relationship" and starting working together again within this remit.

Our company is considering whether the EPO is worthwhile continuing with as opposed to going the national route in Europe, to save time (and possibly money). This is not good for the future of the EPO as I am sure I am not the only one getting hacked-off with the current situation at the EPO - buck your ideas up befroe you start to lose business...!!!

Anonymous said...

...I've heard direct from the "horses mouth" - DG1 business services - that Rule 137(4) will be called into play by the EPO. You might have to rethink your tactics...

Kevin Cordina said...

Anonymous(2) - yes, we figured that rule would be used to prevent forcing a new unity objection by introducing new claims.

However, the strategy above doesn't rely on that - the unity objection is created when each new divisional is filed so there is no amendment which can fall foul of Rule 137(4).

Gerontius said...

I'm with Filemot and think attempts like this to "dodge" the rules and play games are ridiculous and, frankly, not in a client's best interests. Attempting to game the system is comparable to a double or nothing bet: you might come out of it better (with two patents rather than one) but there's a chance you'll lose everything.

I'm particularly intrigued by the comment that "technical developments and business needs change" as if this leads logically to the conclusion that you should be able to file divisionals as late as you want. In that case, you should be able to divide after grant, if you wished. The time limit of "before grant" is just as arbitrary as the time limit of "within two years".

And filing divisionals for those reasons appears to me to be exactly the sort of abuse the new rules are attempting to prevent. Filing a divisional because of "changing technical developments" is just a pleasant sounding euphemism for "blocking the design around your competitor came up with that you didn't think of first time around."

So, I don't see what the fuss is about with these new divisional rules, perhaps because I had a lot of early experience with the tight limits on divisionals in the UK, and perhaps because I am far more concerned and bemused by the other changes (as I've made clear elsewhere on these boards).

What does concern me is that people are already looking to punch holes in the new rules when they should know that the only response that will elicit from the EPO will be something that really is draconian - like being able to file divisionals ONLY if there's a unity objection.

MaxDrei said...

Robin Jacob made a speech in Munich many years ago. He opened with something like "You know, we can learn a great deal from the Americans. Watch what they do. And then be careful not to do the same". It got a big laugh. I'm thinking about the Gerontius remark about issue date being arbitrary. The Americans allow "broadening re-issues" for two years AFTER issue. The European 24 month cap is certainly putting some distance between us and the land of the broadening re-issue. And fair enough too, I would submit. Isn't the UK the home of the world's best patent drafters. Shouldn't the UK then be leading the cheering, for any measure that puts a premium on "quality" drafting?

Having said that, if there is indeed a hole in the EPO cap, I need to know how to work it. So, thanks to Kevin, the Kat and the commentators above.

Anonymous said...

Filemot and Genontius - do you work for innovative clients? We work for many small start-up companies who have to perform a delicate balancing act between filing a patent as soon as they can to avoid being gazumped by the 'big boys' and progressing their technical development. Development of pharmaceuticals takes years and it may be some significant time before compounds are fully characterised and tested. The strict and rigid approach you advocate is the death knell for pharmaceutical companies big and small as well as other innovative companies. The use of divisionals to protect specifics is vital for industry and not abusive. If there is no reward for innovation, who do you think will do the innovating? Are they to do it for free?!! Such an idea may be a laudible one but is not one which is economically viable for ANY company.

Meldrew said...

Of course, if you feel the need to game the system for the perverse joy of it, then you can, albeit at the risk of adverse decisions on your interpretation of the rules and the effect that might have on your clients.

It should be within the skill of any competent attorney to get two or more generations of divisionals out of the system by suitably drafting the claims at each generation, however this requires that the attorney's interpretation of the rules is the same as the Boards of Appeal will eventually have.

When you add in the fact that the EPO is looking to see whether a deferred examination system makes sense, given that we have de facto deferred examination in any event, the rule changes make little sense at all.

In fact the purpose of the rules appears to my eye as a shot across the bows of attorneys with the strong message "Stop sodding about with the system".

If we don't listen then I think stronger and more effective messages may be coming our way.

Anonymous said...

Re: Meldrew. I have a strong feeling that your assessment is correct. Even if it is possible to get around the new rules, doing so would only invite not only the closing of any loopholes but also further tightening-up of procedures as well.

With regard to giving more time to start-up companies, divisionals do indeed give them the opportunity to patent specifics not foreseen as particularly valuable when the parent was drafted but only where the specifics in question were disclosed in the parent application. Furthermore, while time is gained in terms of development time before filing a divisional, no time is gained in the length of protection, since the divisional has the same filing date as the parent (Art.76(1) EPC) and expires on the same day as the parent 20 years thereafter (Art.63(1) EPC). The only chance to increase the 20-year term of the patent is to invoke Art.63(2) EPC in those states which permit term extension in areas such as pharmaceuticals. Unfortunately, this is not an uncomplicated procedure.

Gerontius said...

Here's another reason the new divisional rules should not be an issue: they still give you at least four years from filing to make your "technical developments" and assess your "business needs".

Priority application filed nationally - EP application filed at one year - Published with search report at 18 months - exam requested at 2 years - first examination report issued X months later - divisionals due 2 years after that.

So you get 4 years + X months to file a divisional, where X is however long it takes for the EPO to issue a first examination report. If you file a PCT, it's going to be more like five years even if the examining division are ultra-quick.

That must be ample time for all but the most "innovative" of applicants. It's more time than has been available under the UK rules (old rule 34, new rule 30) since at least the early 90s, and I haven't seen any complaints about those.

Anonymous said...

Forgetting whether such a thing is morally right or not, I'm not sure this "dodge" will work. The rule refers to a unity objection raised by the Examining Division, but the first unity objection you'll encounter will be in the extended search report which is the responsibility of the Search Division. You can get the Examining Division to reaffirm this if you like - but I doubt that will be considered the first raising of the specefic objection.

Of course, in practice, the Search Division and the Examining Division is the same guy. But that's not how the EPC sees it in my understanding.

Anonymous said...

I find this issue a little silly and puts the EPO in a very bad light.

The EPO tell applicants they are "abusing" the process, but how is it an abuse when the applicant (and his attorney, no doubt) are acting within the rules of the games?? By the same token, so too is the EPO "abusing" the process by taking (in many cases) more than 5 years to issue the first office action whilst charging renewal fees and making more money through their own delay! Now here's a conflict of interests if ever there is one. And now there is talk of deferred examination at the EPO!

They keep banding on about what's in the public interest - getting applications through the system with a thorough search and examination of the claims worthy of the fees is in the public interest, surely!!!

Anonymous said...

@Anon of 1:39pm:
New R.36(1)(a) and (b) only refer to communications by the Examining Division, so the search opinion does not count.

One way to delay the first communication is to file new claims in response to the search opinion together with the request for examination (or together with the reply to the R.70(2) communication, e.g. in Euro-PCT cases). If you don't do that, the EPO will issue an automated first communication referring to the search opinion pretty soon after the request for examination. (Hmmm, I now realise that new R.70a(3) seems to make replying to the search opinion mandatory.)

In Euro-PCT cases it's possible to delay the first communication (for free) by requesting an extension of time limit under R. 132(2) EPC.

@Anon of 3:19pm:
The EPO tell applicants they are "abusing" the process, but how is it an abuse when the applicant (and his attorney, no doubt) are acting within the rules of the games??The idea of "abuse of procedure" is that the rules are (ab)used for a purpose for which they were never intended. For sure the EPO is not allowed to do this (Art. 125 EPC). It's a bit harder for the EPO to prevent abuse by applicants (although I'm not sure it has really been tried in the case of divisionals), so they picked the easy option of changing the rules.

Alan Benfield said...

As an EPO examiner of 22 years, perhaps I could explain to some of you what 'abusive' use of divisionals is: a large company (usually, but not exclusively, Japanese) files what I like to refer to as a 'portmanteau' application containing multiple subjects over hundreds of pages and claims. It is not clear (thus in conflict with the provisions of Rule 42(1)(c) EPC) exactly what the invention is about. Often the 'statement of invention' (sic!) runs to over a hundred pages or more. More often the application describes a complete system without indicating what exactly is supposed to be the problem and what is its solution. The (usually) huge number of claims roams over several subjects, is often multiply redundant and certainly lacks conciseness (Art. 84 EPC). This is used to provide the basis for a continuing stream of divisionals based upon various details (I have a family of divisional applications which began in 1994 which has generated 16 divisionals and has a family of 72 applications world-wide. They still keep on coming. Each time a new one pops up we see the same 162 page description with a new set of claims often unrelated to any previous claims and with no indication of support. Alternatively, the same claims are filed as previously, or claims which appear to claim matter already claimed in another form of words.)

Forgive me, but to some of us here, this behaviour looks like an attempt to deliberately obfuscate an area of technology over a prolonged period rather than a genuine attempt to protect a clear-cut invention.

Oh, and by the way: if the parent contains claims to A and the first divisional claims to A and B, any sensible examiner will object to double patenting (see GL C-IV.7.4; C-VI.9.1.6). No Art. 82 objection need be made...

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