Amended Rules for European Divisional Applications: Consequences and Strategic Considerations for Practitioners

Amended Rules for Filing European Divisional ApplicationsAccording to an announcement of the EPO, new rules for filing European divisional applications will enter into force on April 1, 2014.

The new rules will have the consequence that for all European patent applications pending on April 1, 2014, European divisional applications may (again) be filed even if the time limits of 24 months according to present Rule 36 (1) a) or b) EPC have lapsed.

Typically, the official communication pursuant to Rule 71 (3) EPC sets a 4-months limit for the applicant to fulfill the formal requirements for grant of a European patent, i.e. to approve the documents intended for grant, to file translations of the claims into the other two official languages, and to pay the official grant and publication fees.

Since the EPO needs at least several weeks to issue a European patent, once the formal requirements are fulfilled, an applicant for a European patent receiving the Rule 71 (3) EPC communication in December 2013 or later can now be quite sure that his patent application will still be pending at the time when the new rules enter into force. This provides him with the opportunity to file new European divisional applications even if the time limits of present Rule 36 (1) a) or b) EPC have already lapsed.

Applicants of European patent applications, for which the time limits of present Rule 36 (1) a) or b) EPC have lapsed, who received a Rule 71 (3) EPC communication before December 1, 2013 and are interested in filing European divisional applications may consider taking suitable measures for keeping the basic applications pending at least until April 1, 2014. Such measure may include for example (a) the filing of a request for amending the claims, the description or the figures or (b) not responding to the Rule 71 (3) EPC communication in time and later filing a request for further processing under Art. 121 EPC.

Moreover, any patent practitioners who have recently carried out freedom-to-operate (FTO) analyses in the European market are advised to review their analyses in view of any pending European patent applications. Pending European patent applications with an early filing date and for which the time limits of present Rule 36 (1) a) or b) EPC have lapsed could now become relevant again in view of the new options for the applicants to file European divisional applications.

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