Patents, divisionals, legislative spaghetti and the faint-hearted

The following piece, by patent attorney Alexander Korenberg (Kilburn & Strode), raises some interesting issues. Entitled "Not For The Faint Hearted – The New Rules Relating To Filing A Divisional Application At The European Patent Office", it has just been published in the June 2009 (Volume 38, Number 6) issue of the CIPA Journal, p.388. The article reads as follows:

"Significant changes regarding the rules for filing divisional applications (and other procedural rules) will take effect from 1 April 2010. One of the EPO’s stated objectives behind the rule change relating to divisional applications is to increase legal certainty for third parties. Will this be achieved?

Introduction

Under the current rules, a European patent application can be divided at any time the application is still pending, that is it is not granted, withdrawn or refused. New rule 36(1) of the European Patent Convention introduces additional time limits for the filing of a divisional application:

Rule 36 (1)

(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 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.

The new rule for filing a divisional application thus includes a time limit to do so by 24 months from the issuance of the first examination report for a family of parent and divisional applications (Rule 36(1)(a)). Additionally, the new rule provides for an independent time period to file a divisional of 24 months from an examination report raising an objection that the claims of the application relate to more than one invention and therefore lack unity (Article 82 EPC) providing that that specific objection is raised for the first time in the examination report (Rule 36(1)(b)). In the remainder of this report, this time limit to file a divisional application within 24 months of a first specific lack of unity objection is referred to as the “further time limit”. As will become clear below, understanding the consequences of the new rules, and specifically the further time limit, is far from straightforward – only the brave should read on.

“That Specific Objection”

There is a question as to what is meant by “specific” in the context of new Rule 36(1)(b). On the one hand, “specific” could simply refer back to Article 82, in which case only the very first non-unity objection raised for a family of applications would trigger the further time limit. On the other hand, “specific” could refer to non-unity objection relating to specific claimed subject matter, in which case a further time limit would be triggered each time a non-unity objection is raised for the first time for a specific claimed subject matter. In the absence of guidance from the EPO, it seems plausible to assume that the latter interpretation will be applied and that “that specific objection” means an objection specific to particular claimed subject matter not being in unity. This reading seems reasonable in light of Article 4G(1) of the Paris Convention which recites that the applicant may divide the application if a unity objection is raised. The further time limit appears to be intended to allow the filing of divisional applications occasioned by a lack of unity objection (as opposed to a “voluntary” divisional application filed on the applicant’s own volition), even if the 24 months time limit running from the first examination report has expired.

Limited effect of the further time limit

The question arises as to how the further time limit in the case of a lack of unity objection affects the prosecution strategy for a family of parent and divisional applications. Assuming that the EPO tends to raise any objections of lack of unity in the first examination report, any further time limit initiated by a lack of unity objection is likely only to apply in situations where a first examination report has already issued. The further time limit will then only apply if the applicant introduces a lack of unity by amendment after the first examination report or files a divisional application with claims which lack unity. What is the effect, then, of the new rules on such an amendment or divisional application?

Owing to the interaction with other rule changes taking effect at the same time, and in particular new Rule 62a EPC, matters are not quite as straightforward as they are currently. Rule 62a EPC will require a selection of a single independent claim per claim category (product or method/process, in accordance with existing Rule 43 (2) EPC) before a search is carried out.

Rule 62a

(1) If the European Patent Office considers that the claims as filed do not comply with Rule 43, paragraph 2, it shall invite the applicant to indicate, within a period of two months, the claims complying with Rule 43, paragraph 2, on the basis of which the search is to be carried out. If the applicant fails to provide such an indication in due time, the search shall be carried out on the basis of the first claim in each category.

(2) The Examining Division shall invite the applicant to restrict the claims to the subject-matter searched unless it finds that the objection under paragraph 1 was not justified.

Rule 62a EPC thus requires a selection of a single independent claim per claim category (product or method/process) before a search is carried out (let alone an examination report issued). This limits the circumstances where a unity objection can arise, as non-selected claims will not be searched and a lack of unity objection cannot be raised in relation to their subject matter.

Case by Case

As a result of the interaction of the new rules, four cases need to be distinguished:

• A divisional application with claims comprising several groups of independent, product and method/process claims, each group of independent product and process claims relating to a respective invention (“a priori” non-unity): Although multiple inventions are present in the application as filed, the interaction of the new rules will require selection of one independent claim per category and a later deletion of any unsearched claims. If the applicant chooses independent claims relating to the same invention, a lack of unity of invention objection will never arise. Thus, the further time limit does not apply in this situation and the subject matter of the independent claims cannot be protected once the original 24 months time limit from the very first examination report issued for the family of applications has expired. If, on the other hand, the selected independent claims do not relate to the same invention, a lack of unity objection can be expected, which would initiate the further time limit. However, this comes at a price, since only the first such independent claim will be searched while the remaining non-unified unsearched independent claims can only be pursued in a further divisional application (with clear cost implications).

• A divisional application having claims with a single independent claim each for a product and method/process not in unity: This situation is considered unlikely to arise often, as a single claim set is not usually created to include independent product and method/process claims to non-unified inventions. Nevertheless, for a set of claims containing a single independent claim per category in which the independent claims are not in unity (for example apparatus and method claims relating to separate inventions), a lack of unity objection triggering the further time limit can be expected. However, the same problem with unsearched subject matter as outlined above for the selection of independent claims for different inventions in different categories applies. The non-selected of the two independent claims can only be pursued in a divisional application.

• Lack of unity based on prior art (“a posteriori” non-unity): The EPO could raise a lack of unity of invention objection if the independent claims are found to be not novel or not inventive in light of prior art cited during the search of the application. A lack of unity objection should be raised if the dependent claims are considered not to be linked by a common inventive concept (“special technical feature”) in light of the prior art. This may be considered an “unexpected” lack of unity objection. If such a lack of unity objection raised at the search stage is confirmed in an examination report, this examination report triggers the further time limit for filing a divisional application (providing that the objection is being raised for the first time). Thus, the further time limit may apply where an “unexpected” lack of unity objection is raised based on the result of the search.

• The applicant introduces a new set of claims lacking unity after the first examination report: In accordance with the new rules, any amendments after the first examination report will be at the EPO’s discretion (as opposed to the present rules, where the applicant can amend once as of right after the first examination report). We speculate that non-unitary amendments after the first examination report are unlikely to be admitted (and thus no lack of unity objection would be raised).

Conclusion

As can be seen, the seemingly simple approach of providing a time limit for filing a divisional application triggered either by the very first examination report or by the first examination report raising a specific lack of unity objection, in fact is all but simple in its consequences. The result is a complicated set of scenarios depending predominantly on the structure of the claim set. A further factor, of course, is how consistent the EPO will be in applying the new rules. For example, if new Rule 62(a) (requiring selection of an independent claim per category) is not applied consistently, different scenarios will arise on a case by case basis. Likewise, much will depend on how lenient the EPO is in applying its discretion to allow amendments after the first examination report has issued. This will add further uncertainty.

It may be the intention of the EPO to limit the availability of the further time limit (where a lack of unity is raised). Nevertheless, the availability of this time limit is applicable to limited circumstances which are difficult to understand and/or in part, unpredictable. This could, in effect, be contrary to the EPO’s stated intention behind the rule changes, of increasing legal certainty for third parties. In many cases, determining whether further divisional applications can still be filed under the rules from 1 April 2010 will be more difficult, more costly and less certain than under the current system".

The IPKat considers this to be one of the most non-illustrable blog features he has ever posted. He is however concerned at the amount of effort and ingenuity that goes into drafting increasingly complex rules that can scarcely be understood by the layman and which seem to consist almost entirely of a sort of legislative spaghetti that tangles everyone up. If the system were designed from the point of view of what its users want -- and they appear to want both the facility of divisionals and the greatest effectiveness in being able to exercise that facility -- might it not be better to start from that position rather than keep worrying about the interests of third parties. If if weren't for patent applicants there would be no third parties. Merpel merely notes that the current rules on divisionals are a good deal longer than the entire text of the Venetian patent law of 1474: see Venetian Cat (no relation) here.

Tricky issues concerning divisionals have also been recently discussed on the IPKat's weblog here, here, here and here.