7 April 2009: New EPO Practice to Curtail Divisional Applications

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The European Patent Office (EPO) is planning a number of measures to restrict an applicant’s ability to file divisional applications. A decision of the Board of Appeal casts doubt on what can and cannot be included by means of a divisional application, and new regulations issued by the Administrative Council severely restrict the time in which divisional applications may be filed.

The EPO has generally taken a position against the practice of applicants to file divisional applications during the application process. They regard most divisional applications as attempts to delay the examination process or create legal uncertainty for competitors regarding the wording of the finalised claims.

The new developments follow the EPO’s aborted attempt two years ago to render divisional applications irreparably invalid, should they inadvertently contain added subject matter at their filing date.

Time Limits to File Divisionals

A vote from the EPO Administrative Council has also led to a change in the regulations concerning the filing of divisional applications, and in particular the time limits for doing so.

At the moment it is possible to file a divisional application based on any pending earlier application.  However, as of 1 April 2010 Rule 36(1) EPC will read as follows:

“1) The applicant may file a divisional application relating to any pending earlier European patent application, provided that:


(a) the divisional application is filed before the expiry of a time limit of 24 months from the Examining Division's first communication in respect of the earliest application for which a communication has been issued, or

(b) the divisional application is filed before the expiry of a time limit of 24 months from a communication in which the Examining Division has objected that the earlier application does not meet the requirements of Article 82 EPC.”

Under the new rule, an applicant will have two years from receiving an Examination Report on their earliest application to file a divisional unless an objection is raised that an application, and not necessarily the earliest application, claims more than one invention (a unity of invention objection under Article 82 EPC).  In the latter case the applicant gets two years from the unity of invention objection to file a divisional.

The aim of this new rule is to prevent an applicant cascading a series of divisional applications in order to keep an application pending as long as possible.  The EPO hopes that this will prevent applicants waiting to see what their competitors do and then attempting to cover this at a later date by claiming it in a divisional application.

We will have to wait and see what the effects of this rule change will be.  For example, will it be possible to introduce a unity of invention problem into an application to try any obtain an extra two years to file a divisional?

Double Patenting & Divisionals

The EPO does not allow an applicant to obtain two patents for the same invention.  Despite acceptance of the EPO’s general practice to refuse cases on the grounds of double patenting, it was generally thought that there was no direct support in the European Patent Convention for such refusals.

However, in recent decision T_0307/03, the EPO Board of Appeal attempted to derive basis for double patenting objections directly from the wording of the European Patent Convention.  The Board relied upon Article 60(1) EPC, which states:

The right to a European patent shall belong to the inventor or his successor in title.”

From this wording, the Board decided that under the EPC the principle of prohibition of double patenting applies because the inventor has a right to the grant of one and only one patent from the European Patent Office for a particular invention as defined in a particular claim.

The Board went on to decide that a claim in a divisional application cannot overlap with the scope of a claim in a parent application.

In the appeal in question, the applicant tried to obtain protection in a divisional application for a slightly broader concept to that found in the granted parent.  The Board objected to this and said:

“To avoid this objection of double patenting the appellants would have had to confine the claimed subject-matter in the [divisional application] to subject-matter not already patented in the [granted parent].”

The EPO seem to be saying that overlapping scope between parent and divisional applications is not permissible, despite previous Board of Appeal decisions saying the opposite (see T_0587/98 and T_1391/07 for example). 

Whilst a single decision from the Board of Appeal is only binding on the individual case in question, there is a concern that the  EPO will decide to incorporate the principles of  T_0307/03 into the guidelines for practice.  If they do so, this could put an end to strategies such as filing an application containing narrow claims to obtain a quick grant and protection, whilst also filing a divisional application directed to a broader concept.

We eagerly await further clarification from the EPO. Perhaps we will see a referral to the Enlarged Board of Appeal to clarify the situation.

Needless to say, we will be keeping a close eye on the development of the law in the area of divisional applications in the coming months.

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