The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Parvis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Wednesday, 6 March 2013

EPO divisionals: time to have your say

European patent practitioners won't need reminding that EPC Rule 36 was amended in 2009 to limit the time within which a divisional application could be filed, imposing an absolute cut-off of two years from the first examination report (with limited exceptions). 

The EPO came in for a lot of stick then (and, to be honest, ever since) for the lack of proper consultation at the time that Rule 36 was amended, and for ignoring the almost universally negative input from most professional bodies and users of the patent system who did have the opportunity to comment.

24 months can pass very quickly ...
The EPO has now agreed to re-examine the controversial time limits in Rule 36 (as hinted at during the last epi Council meeting - see epi Information 4/2012, p. 99, downloadable in its entirety here)

Input is sought by means of an open, online consultation on how Rule 36 ought to be amended.The structure of the consultation is simple: a web page with six questions, as follows: 

(It would be useful to learn about your background and / or your professional activity, as well as to get some insights into the extent to which your comments are the result of direct experience)

As the consultation page explains, the number of divisionals filed has actually increased since the new regime was introduced. Additionally, one of the practices preceived as "abusive" under the old regime, i.e. the filing of a divisional on the day before oral proceedings to maintain pendency, has been made largely unnecessary by Decision G 1/09 which allows for divisionals to be filed after refusal and up to the time limit for filing a notice of appeal.

So if (like this Kat) you have been critical of the 24 month cut-off, which often has expired long before the examination proceedings have crystallised the issues and thus shown the need to file a divisional, now's your chance to help craft the perfect replacement for Rule 36. (Merpel notes that "now" is indeed the time: there's no indication given of how long the consultation will run, so it wouldn't be wise to wait too long. Perhaps this is an oversight that the EPO will fix.) Edited to note: Thanks to the eagle-eyed correspondents who pointed out that the consultation will run until April 5, 2013, as noted on another page. Further edited to note that the closing date is now prominently displayed on the main explanatory page as well, so Merpel has been put well and truly back in her box.

The EPO deserves great credit for having the open-mindedness to revisit this controversial provision, and thanks are also due to those involved in epi and other organisations who have worked behind the scenes to have this issue re-opened.


Anonymous said...

The consultation runs till 5th April - this is shown on the main 'consultations' page.

Anonymous said...

Personally speaking, I'm divided on the issue.

Anonymous said...

to put some balance in obligations:

If the EPO takes five years to respond to my arguments arguing in favour of unity of objection, I am two years after the first communication in a position where I am to advice my client whether to pay big money for filing one or more divisionals that may not be required or to trust in my arguments that may not fly with the examiner after all, leaving my client with sub-optimal protection.

So whatever time limit on filing divisionals should also put a time limit on the EPO for issuing communications.

In which I am not 100% in favour either. With decreased turnaround time on communications from the USPTO, I do not find an increase in quality. A mere "your arguments are moot" response from the USPTO has reached my desk more than once.

Anonymous said...

If a unity argument is not guaranteed to work you should file a divisional. Simps.

Anonymous said...

This looks very hopeful, both in terms of progress on this issue and in terms of how the EPO will hopefully approach major policy changes from now on. The divisionals time limit and the manner in which it was pushed through the EPO say more about the last president of the EPO rather than the EPO in general, I think. I work in biotech and I think the divisionals time limit added a lot to the injustice of the very strict view on unity that Examiners would take. With sequence based inventions Examiners will often define the invention by virtue of the different sequences (so that tens or hundreds of inventions are found). Since the inventions are identified at the search stage the applicant cannot comment. There are often other ways of dividing up the claimed subject matter to derive less inventions.

Some biotech attorneys believe that finding many inventions at the search stage is the EPO's way of (unofficially) punishing biotech applicants for drafting claims which are too broad.

Anonymous said...

Rather than reforming the regime relating to the filing of divisional applications, my proposal is that the EPO introduce a procedure similar to the US RCE. Everyone benefits - the EPO gains a filing fee, the old application is disposed of and the applicant is, hopefully, able to obtain a patent.

Anonymous said...

Besides having customers who might want to file a divisional, we all have customers as well who would like to do business, and are then advised by us that their competitor’s claims as presently prosecuted are not even the end of the story, but that a divisional may still be filed, with presently unknown claims, so that we can’t advise them if they may do this business, and probably won’t be able to do so for many years to come.

Let’s spare a thought for these customers as well. Is it fair that they may effectively remain doubtful about the legality of a real or proposed activity for many, many years? And therefore more often than not avoid the risks and do nothing, when 10 years later it is shown that there would have been no problem?

Does that stimulate the economy? Does that improve innovation?

Balancing legal certainty for third parties with the rights of innovators, a time limit is very justified.

In practice one always has at least 4 years from priority to file a divisional (and even more when taking the PCT route), and often much more. This should be more than sufficient.

I see the problem of EPO not responding fast enough on the parent, leaving the applicant in doubt as to what will be granted, and that should be improved.

But I for one am firmly on the side of third parties here. They need legal certainty as well, so 24 months after first examination report or first unity objection is more than sufficient time.

Even more time is just calling for abuse of the system to the detriment of society as a whole.

Tim Roberts said...

If the EPO wants to reduce uncertainty for third parties, the first thing it must do is to speed up the examination process. What it should never have done was to make more work for itself (and others) by obliging applicants to file large numbers of divisionals before they are needed - many of which never become needed.

MaxDrei said...

Do we want a system in which clearance opinions can be given as soon as the WO publishes, or not?

If yes, we need the EPO to stay with its strict line on Art 123(2) and not relapse into a German-style generosity to patent owners who introduce intermediate generalisations in their Branch-Off Gebrauchsmuster applications.

There are stent cases in which the patent owner goes on filing divisionals till near the end of the 20 year patent term. The NL court threw out their sequence of infringement suits, telling them to come back only after they had brought one of their issued divisionals successfully through EPO opposition proceedings.

Third party certainty, and confidence to invest in innovation, is the strongest argument to retain the 24 month cap on filing divisionals. But that argument, all by itself, is strong enough, isn't it? Business investment demands certainty.

Tim Roberts makes a good point though. Why can't the EPO search in time to A-publish all their stuff as an A1 publication? That would help everybody.

Anonymous said...

I agree that a delayed reply from the EPO when the time limit under R36(1)(b) is running can definitely be a problem when an applicant wishes a determination of lack of unity to be reconsidered by the Examining Division. However, I don't think that such a scenario occurs very often and in any case there's always the option of making a phone call to the Examiner a couple months before the deadline to inquire whether at least the arguments in support of unity of invention are found convincing. I cannot imagine that an Examiner, once made aware of the problem, would deliberately delay the procedure to make the applicant's life difficult.

As for the other aspects of Rule 36, I share the opinion of Anonymous at 11:06 that a time limit was and is needed.

Anonymous said...

Given many of the comments raise the issue of uncertainty due to delays in examination at the EPO, I wonder what people think of having a system where examination can be 'fast-tracked' on request by any third party.

Anonymous said...

One real problem which can arise is the following. Following the search and first examination report, only prior art of minor relevance is identified and responded to. Based on the file, the applicant's representative is of the opinion that broad protection for the invention should be possible. The application goes quiet for a couple of years and then the examiner comes back with some highly relevant prior art which makes the grant of a patent based on the current strategy unlikely. Having considered the position, a new direction for the claims is suggested. Accordingly, the new claims are filed but the examiner comes back with the argument that the new claims are directed to matter not contained in the search report. Result - the application is refused and the applicant can do nothing about it. This is a result caused totally by the EPO's relaxed approach to examining applications.

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