Update To New Rules On The Filing Of Divisional Applications At The EPO

Andrea Rurhmann and Alison Care, Kilburn and Strode
aruhrmann@kstrode.co.uk and acare@kstrode.co.uk

The EPO has issued a Notice regarding the new Rules affecting the timing of divisional applications, which will come into effect on 1st April 2010.

The Notice can be found at:

http://www.epo.org/patents/law/legal-texts/InformationEPO/archiveinfo/20090820.html

The Notice provides further information and clarification of the new Rule 36 EPC, and also advises of an amendment to Rule 135(2) EPC, to exclude the possibility of further processing as a remedy if the time limits of Rule 36 EPC for filing a divisional application are missed.

The Notice states that:

  • “Earlier” application refers to the immediate parent application on which the divisional is based.
  • “Earliest” application is the first in the sequence of divisional applications (e.g. the grandparent where there are two generations of divisional applications)
  • A lack of unity objection raised for the first time in any communication from the Examining Division will trigger the 24-month time period under R36(1)(b) EPC, including, for example, in a summons to oral proceedings, on the date of oral proceedings, on the date of a telephone call, or on the date of the notification of the minutes of a telephone call, whichever raises the lack of unity objection first.
  • The 10-day notification period applies to the time limits for filing a divisional application under Rule 36(a) and (b).
  • Further processing under Article 121 EPC will not be available for the time limits under new Rule 36.
  • Re-establishment of rights under Article 122 EPC will remain available to remedy a failure to observe the time limits for filing a divisional application under new Rule 36 EPC.

For further information, please contact your usual Kilburn & Strode advisor for our detailed Briefing Note on the new Rules governing the filing of divisional applications.