The IPKat doesn't understand why amendments to the law are often not fully thought through before they are brought in. Such is the case with the upcoming amendments to Rule 36 (among others) of the European Patent Convention. As from 1 April 2010, this will dictate strict, but uncertain, time limits on when divisional applications can be filed. More detail on the new rules can be found in the IPKat's previous posts here, here and here, and from the EPO's Administrative Council decision here.
The amended rules themselves are not very clear, as many patent attorneys will already know. The EPO have now issued a notice that attempts to explain how the new rules will work in practice, and clarify some of the wording used. Unfortunately, as might be expected, the notice is itself not very easy to follow. The IPKat has managed to get the following points from it, but there may be some others that his readers might be able to help with.
1. "Earlier" does not mean the same as "earliest", and is intended to refer to only the immediately preceding pending application, rather than the first parent application, meaning that the 24 month time limit starts either from the date of the earliest A94(3) communication (e.g. on the parent, although this need not be the case) or from the date of a first communication raising a unity objection under A82. These could, of course be the same, but the rule leaves open the possibility of a new date being set if a unity objection is raised later on.Some of these clarifications inevitably raise further questions, which the IPKat has vaguely in mind but will leave to his readers to puzzle over and comment on if they feel so inclined.
2. The examining division's "first communication" is one under Article 94(3); communications before this, i.e. from other EPO divisions, do not start the 2 year period.
3. A communication under Rule 137(5) cannot start the clock ticking, as it is not an objection of lack of unity under Article 82.
4. The Rule 126(2) 10 day rule counts.
5. New Rule 36 applies only to divisional applications filed on or after 1 April 2010. If the time limit under the new Rule has expired by then, or is still running, a divisional can still be filed up until 1 October 2010. The IPKat guesses this means that the 2 year period has already effectively started for applications where a communication under A94(3) has been issued.
PS. After reading the comments below this post, the IPKat now thinks that the way to get the longest period for filing divisionals is the following:
- File the parent application, making sure as far as possible that no objection under A82 will result. If the search report or written opinion identifies a lack of unity, make amendments to overcome it. This should work for both direct application and ex-PCT regional phase applications.
- Within 24 months of the first communication under A94(3) issuing on the parent (or, if no report is issued, before the grant date), file a divisional application containing claims that will definitely result in an objection under A82 (two independent claims directed to roughly the same thing should do it).
- File any remaining divisional application(s) within 24 months of the examination report issued on the first divisional.