Some time ago, the EPO introduced rules that restricted the period in which applicants could file divisional applications. In most cases, divisionals can now only be filed within a period of two years from notification of the first communication from the Examining Division under Article 94(3) and Rule 71(1) and (2) EPC, or under Rule 71(3). Where there are two or more related applications (ie parent and divisional(s)), it is the first such communication to issue on any of those applications that triggers the deadline.
Communications from the EPO under Article 94(3) EPC are normally issued on EPO Form 2001. However, in certain circumstances, the EPO has in the past used a modified version of that form, Form 2001A. This was used where the applicant had failed to make a substantive response to a written opinion accompanying the European search report issued before 1 April 2010. Form 2001A was issued automatically, without any substantive input by an examiner, but was nonetheless regarded (by practitioners and indeed by the EPO) as a communication from the Examining Division, and therefore was considered to be the relevant communication that started the period in which divisional applications could be filed.
However, the EPO has now issued a notice (click here) confirming that a communication issued on Form 2001A will no longer be considered to be the communication that triggered the deadline for filing divisional applications. This means that, in some cases, the deadline previously calculated is not correct (and indeed the information shown on the European Patent Register is also not correct).
This announcement will only affect a very small minority of European patent applications. Nonetheless, we are presently reviewing all cases that we are handling and will contact clients in the event that any action is necessary.
10 January 2012