Rule 36 EPC: New Time Limits for Filing Divisional Applications at the European Patent Office

New rule 36 EPC, time limits for filing division applicationsThe European Patent Office (EPO) has finally bowed to the pressure of many applicants for a European patent and will introduce new rules governing the filing of divisional applications. As has been announced by the EPO on October 18, 2013, the controversial Rule 36 EPC will be amended with the effect of April 1, 2014.

According to the EPO’s announcement, which is only available in English language, the Administrative Council decided on its meeting in October 2013 to amend the Rules 36, 38 and 135 of the EPC implementing regulations. Starting from April 1, 2014, it will again be possible to file divisional patent applications as long as the earlier (i.e. parent) patent application is pending. The 24-months time limit for the filing of divisional applications will de facto be repealed.

In addition to the normal filing fees, a further fee will be charged as part of the basic fees for filing any divisional applications of the second and any subsequent generation. In other words, the filing of a divisional application in respect to any pending divisional application will result in an additional fee. This amount of the divisional fee will grow progressively with the number of generations of divisional applications up to the maximum fee amount, which will be announced later in 2014.

Many applicants will welcome the new rules, which make possible again the filing of divisional applications for European patent applications within a much longer time frame, i.e. as long as the earlier application is still pending, thereby providing more flexibility for the applicants.  Since in several EPC contracting states the rules for filing divisional applications are similar to the new rules of the EPC, e.g. in Germany and other countries, the change of Rule 36 EPC will contribute to a harmonization and simplification of European patent law. For law firm as well as for patent departments, it will be much easier to note time limits.

The monitoring of the time limits of Rule 36 EPC has been considered especially difficult and error-prone, because for any divisional application the receipt of the first official communication of the Examining Division of the respective (first) earlier patent application has to be noted. Moreover, there have been discussions about the question, which communications qualify as the first communication of the Examining Division. These difficulties and the confusion should be overcome with the entry into force of the changes in 2014.

The introduction of an additional fee for the filing of divisional applications will be in line with the current practice of the EPO to take influence on the decisions of European patent applicants by demanding high fees for certain requests (see claims fees, page fees, annuity fees etc.). An objective reason for introducing yet another fee specifically for the filing of division applications – which comes on top of the “normal fees” for filing a European patent application – is at least not evident.

Update 1: A summary of the amendments, which have been discussed on the meeting of the Administrative Council of October 16, 2013, has been forwarded by the European Patent Institute (epi) to its members and can be downloaded as a pdf-file.

Update 2: The decision of the Administrative Council of October 16, 2013 has been made available to the public by a press release of October 24, 2013.

The legal consequences for the practitioners and strategic considerations are discussed in another article.

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