EPO Changes Rule Regarding The Filing Of Divisional Patent Applications
The European Patent Office (EPO) has amended its rule defining the deadline to file a divisional patent application. Effective April 1, 2014 a divisional application may be filed at any time during the pendency of the parent application.
A divisional patent application seeks to protect disclosed, but unclaimed subject matter from a previously filed application (the “parent application”). The divisional application is filed after the parent application, but retains the filing and priority dates of the parent application. Divisional applications are generally filed after a parent application encounters an objection that it contains more than one invention. The applicant may divide the application and pursue claims to one invention in the parent application and the other invention in a divisional application.
Under the EPO’s current rule (which came into force on April 1, 2010) an applicant may only divide an application within 24 months from the first office action (or notice of allowance) or from the issuance of a new objection claiming the application contains more than one invention. The 24 month deadline has been criticized generally because the scope of protection available in the parent application often was not known within the time frame. The amended rule removes the 24 month deadline and will apply to all divisional applications filed on or after April 1, 2014. This may serve to re-open a previously closed divisional application filing window. Applicants who are barred from filing a divisional application under the current rule can seek to maintain the pendency of the parent application until April 1, 2014 and then proceed to file a divisional application.