EPO issues clarification of new rules on divisional patent applications

The EPO has issued a notice providing clarification of amended Rule 36 EPC that comes into force on 1 April 2010 and will impose more stringent deadlines on the filing of divisional patent applications.

The text of new Rule 36(1) is reproduced below, with explanatory notes based on the EPO's notice:

“(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 twenty-four months[5] from the Examining Division's first communication[3] in respect of the earliest application[1] for which a communication has been issued, or

(b) the divisional application is filed before the expiry of a time limit of twenty-four months[5] from any communication[4] in which the Examining Division has objected that the earlier application[2] does not meet the requirements of Article 82, provided it was raising that specific objection for the first time.”

[1] The “earliest application” refers to the first application in a chain of divisionals.

[2] The “earlier application” refers to the immediate parent application on which the divisional application is based.

[3] The “Examining Division's first communication” refers only to communications under Article 94(3) EPC and does not include search opinions.

[4] “Any communication” does not include search opinions either.

[5] The “twenty-four month” period includes the additional 10 days according to Rule 126(2) EPC.

We shall be reviewing all clients' European patent applications in good time before implementation of the new Rule, and will advise clients individually on the appropriate action to take.