The European Patent Office,
in its Board of Directors on October 16, 2013, has approved to modify, again, the Rule 36 EPC relating to divisional applications. He
The purpose of this modification is to change the current approach to the requirements
for applying for a divisional patent.
in its Board of Directors on October 16, 2013, has approved to modify, again, the Rule 36 EPC relating to divisional applications. He
The purpose of this modification is to change the current approach to the requirements
for applying for a divisional patent.
The Office modifies Rules 36
and 135 EPC so that filing of a divisional application is permitted as long as
the previous request is pending. That is, this modification represents a
return to Rule 36 EPC prior to the one currently in force from April 1
2010. However, it is not the only change that has been approved, since
also establishes a additional fee as part of the application fee for the
case of divisional applications filed in respect of a previous application
which in turn is a divisional request. In this way the
Rule 38 EPC.
and 135 EPC so that filing of a divisional application is permitted as long as
the previous request is pending. That is, this modification represents a
return to Rule 36 EPC prior to the one currently in force from April 1
2010. However, it is not the only change that has been approved, since
also establishes a additional fee as part of the application fee for the
case of divisional applications filed in respect of a previous application
which in turn is a divisional request. In this way the
Rule 38 EPC.
El objective of the successive
amendments to Rule 36 EPC has been to limit the use of divisional
as a strategy to prolong the life of the patent application when said
request was likely to be denied. The Office tried to provide security to
third parties and achieve a decrease in the number of divisional applications
presented and therefore in the additional workload they entailed.
amendments to Rule 36 EPC has been to limit the use of divisional
as a strategy to prolong the life of the patent application when said
request was likely to be denied. The Office tried to provide security to
third parties and achieve a decrease in the number of divisional applications
presented and therefore in the additional workload they entailed.
Currently in modification
In force, the Office introduced a period of 24 months as a limit for submitting
a divisional request. More specifically it stipulates that a request
divisional can be filed before the end of:
In force, the Office introduced a period of 24 months as a limit for submitting
a divisional request. More specifically it stipulates that a request
divisional can be filed before the end of:
- a period of 24 months from
the first communication from the Examination Division regarding the first
request for which a communication has been issued, or,
- a period of 24 months from
any communication in which the Review Division objects that the application
above does not meet the requirements of unity of invention (Art. 82 EPC), always
that this objection was notified for the first time.
However, the reality is
being different than expected. The number of divisional applications has
increased, possibly because, as a precautionary measure, applicants
submit divisional applications before the expiration of the 24-hour period
months. Added to this is that interpreting the current wording of Rule 36 EPC
It is not easy, in fact, it was revised a few months after its entry into force.
Furthermore, there are numerous complaints from applicants who consider that the
current wording of Rule 36 EPC undermines their interests. Another aspect that
has not been able to be improved is that it is still possible to present successive
divisions of the same initial application. Definitely, the current Rule 36
EPC has turned out to be a problem rather than a solution.
being different than expected. The number of divisional applications has
increased, possibly because, as a precautionary measure, applicants
submit divisional applications before the expiration of the 24-hour period
months. Added to this is that interpreting the current wording of Rule 36 EPC
It is not easy, in fact, it was revised a few months after its entry into force.
Furthermore, there are numerous complaints from applicants who consider that the
current wording of Rule 36 EPC undermines their interests. Another aspect that
has not been able to be improved is that it is still possible to present successive
divisions of the same initial application. Definitely, the current Rule 36
EPC has turned out to be a problem rather than a solution.
The Office has decided with this
new modification provide a different approach to solve the problem
initial goal was to limit the use of divisionals as a tool to prolong
indefinitely the life of patent applications.
new modification provide a different approach to solve the problem
initial goal was to limit the use of divisionals as a tool to prolong
indefinitely the life of patent applications.
This new approach establishes the
elimination of the 24-month period so it is once again possible to present
a divisional application while the previous application is pending, but
adds an additional fee to the application fee, which can be a further way
simple and proportionate to discourage those applicants interested in
submit successive divisional applications.
elimination of the 24-month period so it is once again possible to present
a divisional application while the previous application is pending, but
adds an additional fee to the application fee, which can be a further way
simple and proportionate to discourage those applicants interested in
submit successive divisional applications.
Although the amount of said fee will be discussed
soon, the idea is that its amount will increase progressively with
the number of successive divisionals presented. It is also established that the
first divisional application submitted will not be taxed with said fee
additional.
soon, the idea is that its amount will increase progressively with
the number of successive divisionals presented. It is also established that the
first divisional application submitted will not be taxed with said fee
additional.
The date of entry into force of
The modification of Rule 36 EPC will be on April 1, 2014 and will apply to divisional applications filed after that date.
The modification of Rule 36 EPC will be on April 1, 2014 and will apply to divisional applications filed after that date.
