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Friday, 21 August 2009

More confusion about EP divisionals

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.

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.
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.

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:
  1. 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.
  2. 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).
  3. File any remaining divisional application(s) within 24 months of the examination report issued on the first divisional.
This strategy should give the applicant well over 4 years from the initial filing date in which to file their final divisional application. If any readers can think of a better way of maximising the time available under the new rules, please leave a comment.

18 comments:

Gerontius said...

Reading your comment 1, I suspect you've misunderstood something. Completely contrary to what you say, time limits will not run later for chains of divisionals and the EPO notice does not say that they will.

David said...

I disagree (although for clarity I have removed the offending bit of the post). For "mandatory" divisionals, the notice suggests that the 2 year period could run from later on, if an objection under Article 82 was made for the first time in a divisional application.

Gerontius said...

Well, yes. But what's unclear about that? That's exactly what the rule says.

And what's it got to do with chains of divisionals? It doesn't matter whether the Art82 objection was raised in a divisional or the parent.

David said...

Ok, I give up. You're right. I'm going to go and write about something else now, and probably get that one wrong too.

Anonymous said...

File EP1 on 01.04.2010. Do not pay any fees.

File divisional application EP2 by referece to EP1 on 02.04.2010. Pay the fees for EP2.

Withdraw EP1 on 03.04.2010.

Now the first communication in respect of the earliest application is never issued, so the "voluntary period" of Rule 36(1)(a) will never expire. EP2 and divisionals from EP2 can be divided as long as they are pending.

Anonymous said...

Re the last anonymous, the wording of Rule 36(1) is as follows:

"The applicant may file a divisional application relating to any pending earlier European patent application, provided that:

(a) the divisional application is filed before the expiry of a time limit of twenty-four months from the Examining Division's first communication in respect of the earliest application for which a communication has been issued, or

(b) the divisional application is filed before the expiry of a time limit of twenty-four months from any communication in which the Examining Division has objected that the earlier application does not meet the requirements of Article 82, provided it was raising that specific objection for the first time.


From the rule it is clear that there are two requirements for voluntary division to be in time, firstly the period specified in Rule 36(1)(a) for filing EP2 must be observed, which in the proposed solution in the above post would be the case (since no communication is issued for the earliest application EP1). However, the second requirement (which also applies to mandatory division), is that the parent application (EP1 being the parent for EP2) must be pending, is only met until expiry of the time limit for payment of the earliest fee due in respect of EP1, the filing fee (one month after filing).

The subsequent generation application, EP2 is subject to the same requirements when any divisional applications of this application are filed. Firstly, if EP1 lapses before any communication is sent, then Rule 36(1)(a) provides that the first communication in respect of the earliest application for which a communication has been sent then starts the period for voluntary division. This means that a communication sent in examination proceedings in respect of EP2 would then start the period for voluntary division of EP2 (i.e. for filing divisional of EP2 being EP3). Since, if he wants to have a patent granted, at some point the applicant will have to allow an application to be examined and a communication will have to be issued in respect of one of the sequence of divisionals, the period for voluntary division for all subsequent generations of divisionals will start when this happens. Secondly, the application EP2 must be pending when the divisional thereof, EP3 is filed.

In fact in most cases, since the first communication in examination will raise any issues of a lack of unity the two periods under sub-paragraphs (a) and (b) will run concurrently. This does not necessarily apply to second generation divisionals because the period for voluntary division under paragraph (a) will start to run from the date on which a communication is notified in respect of the earliest application in the sequence (the grandparent application for want of a better definition). In most cases, the first communication will already have been issued for the grandparent EP1 and will have started the period for voluntary division of the first generation divisional application EP2 (i.e. the filing of second generation divisional EP3).

What the solution proposed above will achieve is that where the first communication in EP2 raises the issue of unity of invention, then the periods for voluntary and mandatory divisional of EP2 under paragraphs (a) and (b) will run concurrently also for a second generation divisional (EP3), but not for the third (EP4 based on EP3).

In reality, since there is a delay between filing and search, search and payment of the examination fee (up to six months - Rule 70) and between payment of the examination fee and sending of the first communication, the time period for voluntary division for filing of a first generation divisional will in may cases expire quite some time after filing of the parent application.

gusarapez said...

New R. 36(1) clearly mentions:

"in respect of the earliest application for which a communication has been issued"

Thus, in your hypothetical scenario, the 24 months time limit will be triggered by the first communication for EP2 because EP2 is the earliest application for which communication has been issued.

To the last anonymous... said...

To the last anonymous, nice try. But Rule 36(1)(a) does not read "first communication in respect of the earliest application", it reads "first communication in respect of the earliest application for which a communication has been issued". Thus, of course, the earliest application for which a communication has been issued cannot be the withdrawn parent EP1. It will be first-generation divisional EP2.

Anonymous said...

"the first communication in respect of the earliest application for which a communication has been sent"

Indeed, I should have read more carefully!! Even the notice is clear about this. My apologies.

What about the following. File EP1. On the next day, file divisional EP2 by reference to EP1. Pay the fees for EP2. Don't pay the fees for EP1, but do file another divisional EP3 by reference to EP1 within a month from filing EP1. Don't pay the fees for EP3, but file a divisional EP4 by reference to EP3 within a month from filing EP3. And so on.

Now EP2 can be prosecuted normally. Whenever necessary, extra divisionals can be divided for prosecution from the EPx that is alive at the time.

(I'm assuming "earliest" only looks to the parent, grandparent, grandgrandparent, etc, not to siblings. Otherwise, file EP2 together with EP1 as a separate application.)

I guess this is already a way to overcome the "pending application" limitation of present R. 36(1). Unless I'm again overlooking something! If it works, it verges on the immoral and should only be done to prove that it can be done...

Relevant prior art: US 2008/0221912. This prior art does not seem to teach or suggest the feature of filing extra divisionals for prosecution as a way to overcome R. 36(1).

Anonymous said...

Re last anonymous - yes the branching of divisional filings would work, EP2 could be prosecuted as normal and EP3 filed as a divisional based on EP1, so that EP2 does not define when the period for voluntary division starts, because it is not in a direct line from the filing of EP3 and the original earliest application EP1, but rather EP3 is derived directly from EP1 for which no communication will ever be issued. Quite a brilliant solution!

It would not even be necessary to file a sequence of divisionals from the branch point (from EP3 onwards) within the one period for paying the filing (and also search fees) although this would avoid the need to pay any fees at all for each divisional in the sequence. If the applicant overshoots this one month he would have to pay the original filing and search fees and 50% for further processing in order to resuscitate the latest application which is to serve as parent for the next generation divisional, so that it is pending. If anyone has ever done this would not be known because every member of such a sequence of divisionals would lapse before being published and so the file would never become available to public inspection. However, this would require a lot of energy and time for the attorney. Time is money, so even though no fees would be paid to the EPO, it would become expensive for the client, but theoretically possible. This loophole (filing a sequence of divisionals, each within one month of the parent) already exists in the old version of Rule 36 and the changes to Rule 36 would not eliminate this possibility because none of these applications would ever have a communication issued and so the period for voluntary division would never start.

I have to go to and lie down in a darkened room now, my head is spinning.

Meldrew said...

Sorry, I have come late to this string and the editing of the original post makes it incomprehensible.

Let me throw another question into the discussion.

Article 33 of EPC 2000 gives the Administrative Council competence to "amend" time limits and the Implementing Regulations.

CA/D2/09 amends the Implementing Regulations and introduces new time limits.

Filing of a divisional application under EPC 2000 did not have a time limit before, merely the condition that the parent application was still pending.

Does a power to amend time limits also include a power to introduce time limits? Were the AC acting beyond their competence?

No doubt someone will argue this if they miss the deadline, would they have a chance of success?

I have no firm view, I merely ask the question.

Meldrew said...

On the PS concerning extending the time for filing divisional applications, consider the following route, supposing you have 8 inventions crammed into one application [not unusual]:-

1)File the parent application, making sure when the application reaches the Examining Division that a unitary set of claims to one invention is presented for examination.

2)Within 24 months of the first communication under A94(3)/R71(1)[or A97(1)/R71(3)if that is the first communication] and certainly before the grant date, file a divisional application containing claims that will definitely result in an objection under A82 as relating to two inventions [or file such claims in response to the search report as allowable as of right under new Rule 137(2) EPC].
3) File a divisional application(s) within 24 months of the examination report issued on the parent divisional ensuring that the claims meet the unity objection raised by being directed solely at the "unelected" invention in the parent divisional [i.e. not giving any excuse for it to be treated as a voluntary divisional].
4)In response to the search report on this divisional file an amendment to introduce a further invention as allowable as of right under new Rule 137(2) EPC and thereby attract an A82 objection.

Repeat steps 3 and 4 for as many times as you have the patience and the money. If it takes 2 years for the first examination report on the parent, and one year for the first examination report on each divisional [very unlikely to be so short] you could be filing for the last divisional in the 20th year from priority.

Anonymous said...

@Meldrew:
It is Rule 36 that is amended, so Art. 33(1)(c) applies, not Art. 33(1)(a).

One might try to argue that a time limit on the filing of divisionals is contrary to Art. 76, but this should have no chance of success, since there have been time limits in the past. According to J 38/89, before 1 October 1988, Rule 25(1)(a) read:
"A European divisional application may be filed: (a) at any time after the date of receipt of the earlier European patent application by the European Patent Office, provided that after receipt of the first communication from the Examining Division, the divisional application is filed within the period prescribed in that communication or that after that period, the Examining Division considers the filing of a divisional application to be justified;"
and according to J 13/84, Rule 25(1)(b) contained the wording
"within two months following limitation at the invitation of the Examining Division of the earlier ... application"

So the text "in accordance with the Implementing Regulations" seems to allow the inclusion of a time limit.

Meldrew said...

Anonymous argues on the basis if EPC 1973 rule 25(1)(a) and says "So the text "in accordance with the Implementing Regulations" seems to allow the inclusion of a time limit".

Merely because the AC got away with it before is no reason why they should get away with it a second time.

Besides, between the "old" rule and the current Rule we have had a Diplomatic conference at which everything was considered. The starting point for determining whether they have the power is EPC 2000, not EPC 1973.

Further, the previous change in effect changed the time limit from a time specified in a communication, to a time while the parent application was pending, which seems reasonable. Subsequent case law has determined that that time limit was not a time limit but a condition [by the Byzantine legal logic applied in the EPO] and so the question of whether the AC has the power to remove time limits has not been considered before.

Anonymous said...

Let me put it this way: why would the text "in accordance with the Implementing Regulations" not allow the inclusion of a time limit?

Regarding the Diplomatic conference, one of the general themes of the Revision Act was to give the AC more power to amend the EPC by, among other things, moving a lot of details from the Articles to the Rules. It would be surprising if the AC had less flexiblity to amend Rule 36 EPC 2000 than it had for Rule 25 EPC 1973. If that had been the intention of the member states, something should be clearly pointing in that direction. I do not know what that something would be. Certainly it is not the text of Art. 76(1) EPC 2000 as compared to the text of Art. 76(3) EPC 1973.

Many Rules set time limits, see e.g. Rule 71(3), which implements Article 97(1). Article 97(1) merely states "provided that the conditions laid down in the Implementing Regulations are fulfilled". Apparently this empowers the AC to set time limits.

Im my view, the main argument as to why the period for filing divisionals cannot be shortened, is the argument that the right to file a divisional is some kind of fundamental right of the applicant. However, this right has never been considered so fundamental that limiting this right in time would contravene the EPC. There is no reason that I know of why EPC 2000 would have changed this. I therefore don't see how this argument could succeed.

See also G 1/05, r. 13.1, 13.3 and 13.5, which further confirms that the AC can restrict the right to file a divisional. It's not clear to me why such a restriction could not take the form of a time limit.

Of course there is a limit to how far the right to file a divisional can be restricted. The AC cannot effectively cancel Art. 76. I don't think they did with the proposed amendment, but of course the issue can be raised before the Boards.

Anonymous said...

@Meldrew:
"4)In response to the search report on this divisional file an amendment to introduce a further invention as allowable as of right under new Rule 137(2) EPC and thereby attract an A82 objection."

Such an amendment would probably not be objected to under Article 82, but under Rule 137(4).

Meldrew said...

Anonymous said "Such an amendment would probably not be objected to under Article 82, but under Rule 137(4)."

Correct - my mistake - back to the drawing board and ignore my dangerous suggestion.

Anonymous said...

Hello

Assume we are entering the EP regional phase after the EPO acted as ISA or IPEA during the international phase.

I wonder if the communication under R 161 (1) new form (applicable from April 2010), triggers the time period of 24 months under R 36-1a.

At this point, the ED might already be responsible, since no report of further research needs to be established.

So the communication under R 161 (1) might be a notification according to A 94 (3).

The question probably is whether the notification under R 161 (1) is sent by the RS or by the ED.

So far the notification pursuant R 161 was sent along with the communication under R 162-2, giving by itself the opportunity to amend the claims before paying the claim fees.

a) first scenario
Now, the EPO could decide to first send the notification under R 162-2, signed by the RS, then once the claim fees are paid, send the communication under R 161-1, signed by the ED.

In this case, the time period of 24 months of R36-1a would start running relatively quickly after the entry into EP regional phase.

b)alternative scenario
If the notification under R 161-1 is signed by the SD and as currently is twinned with the notification under R 162, then the time period of 24 months of R36-1a does not go running before long, which is somewhat contrary to the idea underlying the new rules to restrict the possibilities to file divisional applications too long after the filing date.

I see another reason which argues for a dissociation of communications pursuant R 161-1 R 162-2 : if they are combined, the European representative of the applicant may have too little time to study the case before responding to the objections made by the EPO acting as ISA or IPEA. A period of one month to respond is not reasonable.

Does any one have a clue ?

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