Divisional Applications in Europe – New Filing Time Limits

New rules regarding new time limits for filing divisional applications for pending European applications are in force as of 1 April, 2010. A transition period expiring September 30, 2010 has been introduced for all applications pending at the time the new rules came into force.

As we advised you in our February 2010 newsletter¹, the Implementing Regulations of the European Patent Convention (EPC) relating to divisional applications² were changed as of 1 April 2010³. In short, there are now new, non-extendible time limits for filing voluntary divisional applications out of European patent applications.

The new time limit for filing divisional application(s), which apply to the entire patent family⁴, is the later to occur of:

• 24 months from the date of a first Office Action on the merits⁵ issued in a patent family; or
• 24 months from date on which a non-uniformity objection⁶ was raised for the first time.

The new Regulations also provide for a transition period of 6 months, which will expire on 30 September 2010, for filing divisional application(s) in all cases where the aforementioned 24-month time limit has already expired or will expire during the transition period.

In case divisional application(s) are not filed within the new time limits, the ability to file divisional application(s) will be irrevocably lost, with the consequential outcome that it will no longer be possible to obtain a patent on potentially important aspects that were included in the Parent.

Applicants of pending European patent applications would be wise to review all their EP cases, in the near future, so as to assess in good time, before the 30 September 2010 deadline, whether one or more divisional applications need to be filed, in order to fully preserve all patenting options. EP patent applicants will also be wise to docket said 24-month time limits on an on-going basis, with respect to all existing patent applications.

¹ To view the said Newsletter please click here
² A divisional application is a patent application derived out of a pending patent application (“the Parent”) and claims aspects not claimed in the Parent. Patent laws provide that a patent may be granted for a single invention only. Where an examiner determines that a patent application is directed to more than one invention, he raises a so called “non-unity” objection and in response the applicant is required to limit the claims to be directed to only one invention and delete all claims directed to the other(s). With respect to the other invention(s) the applicant may then file divisional application(s). A divisional application bears all dates, including the filing and priority dates, of the Parent.
³ The changes that came into force on 1 April 2010 included a number of other significant changes.
⁴ A patent family, in this context includes a Parent and all divisional applications derived therefrom.
⁵ Namely, a first office action raising patentability objections or confirming patent eligibility of the claims.
⁶ Namely, an objection that the set of claims includes more than one invention.