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Thursday, 30 September 2010

It's EP divisional crunch time

The IPKat should not need to be reminding his patent attorney readers about this, but tomorrow 1 October 2010 is the final day in many cases for filing divisional applications at the EPO (see the IPKat's previous post here for a good starting point), as a result of the EPO Administrative Council decision CA/D 2/09.

Even though applicants and attorneys have had over a year to prepare, there will inevitably be something of a last minute rush to make sure all those divisionals that might be needed are on file by midnight tomorrow.  Will the EPO's fax machines and online system manage to cope with the load?

The IPKat knows that many hard-working people both at the EPO and within patent attorney firms will be struggling at the moment to cope with the excessive load of applications, and would like to express his sympathy for all those adversely affected.  He would be interested to hear any stories of how things are going (or not, as the case may be).  If you have the time, please chip in using the weblog's comment facility (anonymously, if necessary).

As a final tip, according to the Notice of the President dated 12 July 2007 (Special Edition No. 3, OJ EPO 2007), applications can be filed at the EPO's offices in Munich, The Hague or Berlin, in particular at the following fax numbers:

Munich
+49 (0)89 2399-4465
The Hague
+31 (0)70 340-3016
Berlin
+49 (0)30 25901-840

Other things to do in Munich on 1 October here.

1 October 2010 Update: Thanks to a comment, the IPKat has been pointed to this notice from the EPO, which states:

"The European Patent Office (EPO) has been informed of an email containing a hoax announcement purporting to be from the EPO in which the public is given the impression that the Office's fax and online filing services will not be available from 30 September 2010 to 6 am on 4 October 2010, due to maintenance and updating of the Office's telecommunication facilities.

The European Patent Office informs all concerned that this notice is completely false and that all electronic filing facilities at the European Patent Office (online and fax) are fully available.

The Office reserves the right to take legal steps against the person(s) who disseminated this false information.
"
The IPKat, who has not had sight of this email, is intrigued. Can anyone shed any further light?

15 comments:

Anonymous said...

The EPO's online filing system was "unavailable" for a couple of hours late this afternoon. They seem to have got it up and running again though, so things are (slowly) going through. I imagine things will become slightly more frantic tomorrow!

Kevin Cordina said...

Indeed, the filing systems are wobbling already.

One of those times when good old-fashioned hand-delivery from our local office will reduce the concern immeasurably.

Very reasonable rates for anyone having trouble!

Anonymous said...

It's a little worrying that the online filing system went down today. I hope they have been able to increase capacity as one can only assume that there will be an even greater load on the servers tomorrow afternoon. I doubt that the fax machines will be able to pick up any slack.

Anonymous said...

There's always Rule 134(1) if it all goes pear shaped at the EPO and the servers melt down.

Anonymous said...

For whatever it may be worth:

Earlier this year I had occasion to e-file nine EP applications, all lined up and ready to send one after another. The applications were filed in the space of ten minutes and received consecutive application numbers, except for one “skip” in the middle. So only one other application was filed apart from my nine in the space of ten minutes.

Yesterday afternoon, I e-filed five EP divisionals in the space of five minutes, the first of which got number xxx10 and the last of which got number xxx37, so 22 other apps apart from mine filed in five minutes.

I didn’t notice any system performance issues with the filings.

Anonymous said...

See: http://www.epo.org/topics/news/2010/201001a.html

MaxDrei said...

In my experience, the last minute rush is all from the USA, where:

1. Applicants like to "have something pending" till the parent expires

2. you can always "buy more time" if you have enough money (no deadline is ever really final)

3. it had been thought that you can file by October 01 a divisional with a plurality of independent claims, to provoke an Art 82 objection and thereby secure another 24 month breathing space (there if anything is what will crash the EPO computer today)

4. you can file a divisional at the click of a button, and later amend the claims, in a preliminary amendment, and

5. in the last few days, there has been in the USA a viral spread of information, bringing with it a very belated first appreciation that, over in the EPO, today really is the last day.

Anonymous said...

Max Drei: EP Divisionals can be filed at the click of a button too - no need to refile the specification, no need to pay the fees and no need to file claims.

Gareth said...

@Anon 0924 - sure, you can file a divisional without filing any papers. But if you don't file claims, you need to make sure there is basis in the spec for any claims you later file. Quite often this isn't the case, especially with non-european originating cases.

So at the minimum you need to spend time ensuring that you have basis for later-filed claims.

MaxDrei said...

Dear Anonymous, I must apologise, that I expresed myself so clumsily, that you supposed that I did not already know that. My purpose was to explain why a lot of Americans have casually left to the last minute their instructions to their EPO colleagues to file divs at the EPO by today.

Having said that, some of our EPO colleagues might just have the teenziest-weenziest doubt about whether a button click filing at the EPO will preserve for the EPO divisional the full reservoir of disclosure in every US-drafted parent. You know what I'm driving at, I'm sure.

Kevin said...

Re: Gareth - Don't forget we're only concerned about divisionals here, so the basis is already defined by the parent case - missing out claims on filing won't make you any less likely to be able to get them into the case.

Myshkin said...

@Kevin:
Filing the claims by reference to the parent application may get you into trouble if you later want to switch to an invention only disclosed in the description (R. 137(1) and 137(5), first sentence), especially given the fact that the time limit for filing a divisional will have expired by that time.

So in that case it is better to file a new description that incorporates the originally filed claims, and file claims only later (if they still need to be drafted).

Another possibility is to only file the description and drawings by reference to the parent application (and file claims later), but then you lose the possibility of basing new claims on the claims of the parent application (Art. 123(2)).

Meldrew said...

I have compare applicaiton numbers for a number of applications filed by me online over the last few months and, because of the divisional flurry, over the last few days. From these one can get a rough guess of online filing numbers.

From March through to 24th September, the average seems to be about 150 online filinge a day.
The filing numbers from my applications indicated rough filing numbers of:-
27th September 250
28th September 980
29th September 1090
30th September 1700
by midday 1st October - 1520 [guess 3000 in the day?].

Even with long notification to clients - many made their decisions late. It will be interesting to see, in due course, how many divisional applications were filed as a result of thre transitional provisions.

Anonymous said...

It seems that more than 10,000 divisional applications were filed in September.

Anonymous said...

10 000 applications? Wow. Perhaps the whole rule change was dreamed up to pump money into the EPO coffers. Having pocketed the money, how long before the applications are refused on the grounds of added subject matter?

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