EP Divisional Applications: some food for thought

This will be old news for some more well-connected readers, but the IPKat has only just seen a proposal, submitted by the President of the EPO for consideration by the Committee on Patent Law and decision by the EPO Administrative Council, relating to how alleged 'abusive' practices on filing divisional applications might be tackled. The full document can be accessed via Laurent Teyssedre's blog here. The key feature of the proposal involves the following amended version of Rule 36 EPC:
1) 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 24 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 24 months from a communication in which the Examining Division has objected that the earlier application does not meet the requirements of Article 82 EPC.
Laurent thinks that this is likely to be replaced by a revised version, to be submitted for review shortly.  The IPKat suspects, however, that any amendments will be in the form, rather than the substance, of the above proposal, given the EPO's clear desire to crack down on divisional applications following the emphatic decision of G 1/05.  

Any thoughts on how this kind of amendment might affect applicants would be welcome.  
EP Divisional Applications: some food for thought EP Divisional Applications: some food for thought Reviewed by David Pearce on Monday, January 26, 2009 Rating: 5


  1. This suggestion is one of the major subjects at a hearing at the Ministry of Justice in Sweden on Thursday. The association of Patent Professionals in Swedish Industry (SIPF)as well as the Confederation of Swedish Enterprises have strongly opposed the suggested amendments. There are of course a bunch of drawbacks for European industry if this suggestion pass.

  2. There is a revised version of the full document mentioned in your excellent blog. The revised version, which does not contain any amendments to Rule 36 and 135(2) in comparison with the original version as such, but only more text justifying EPO:s reasons for its proposals. The revised version can be retrieved from the Website www.sipf.se. Just click on the link "Hearing om europeisk patentdom..." in the left frame under "Nyheter" (news) and then click on the third blue "här" (here).

  3. It's obvious that if one (or more) appeal(s) is (are) necessary in examination proceedings the 24 months is too short.
    This appears to be another example of the present trend to hasty remedies rather than well considered solutions. I also can't find any hint to the proposed approach in G1/05.

  4. Examiners find it much easier to apply Rule 43 than think properly about Article 82. Applicants may find that they have to persuade the Examiner to object under A82 so they can file a divisional application. The time frames are way too short.

    Completely out of proportion to any problem.

    And poor applicants who can only afford one PCT application for several inventions will be penalised. One of the main aims of the patent system is to encourage investment in innovation, but the EPO seems hell bent on "raising the financial bar" by making things more and more complicated and expensive earlier and earlier (see also claims fees, page charges...).

    This coupled with the plan to force applicants to respond to the search opinion very early, including the WOISA on a PCT (by R161/162 deadline).

  5. I think these changes potentially wouldn't solve the alleged problem, but would cause inconvenience to those who actually need a divisional. For example, I don't think that the changes would solve this problem (because you'd never receive an Examination Report) nor would it stop an would-be "abusive" applicant introducing a lack of unity into each child application so as to fall within part (b). Indeed, it might become good drafting style to include a Pedrick style cat flap and nuclear bomb claim into every application you write, so as to be able to force a lack of unity. I can't see how you could create a rule that allows for the fact that a late-discovered piece of evidence renders a broad claim unpatentable but leaves multiple non-unified inventions without leaving a massive hole that would allow the abuse the rule change is meant to cure...

  6. The problem arises with applications having large descriptions from which one can draw new inventions (sometimes not clearly disclosed, but who knows may be the examiner will not notice) and file them as divisional applications depending on the direction in which competitors are moving. This creates uncertainty for quite a long time on what subject-matter will finally get patent protection.

  7. ... whereas normally the lightning speed at which the EPO examines undivided applications removes all uncertainty almost instantly.


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