The EPO’s Rule 36 was introduced in 2010 and imposes strict time limits on the filing of divisional patent applications. In general, divisionals can only be filed within two years of the earliest communication from the EPO’s Examining Division. The rule was controversial when it was introduced, and has remained so. The aim of the provision was to curb the filing of what the EPO sees as “abusive” divisionals, ie divisionals filed with the aim of having the same technical content discussed again, even when the outcome of the proceedings in the parent application was negative. Such practices were considered to create legal uncertainty that is detrimental to third parties, as well as causing an unjustified increase in EPO examiners’ workload.
After the introduction of the time limit, however, the number of divisional applications that were filed actually increased, rather than fell, as a result of applicants being obliged to file their divisionals as a precautionary measure, before they could assess whether a divisional was really necessary. The time limit was therefore widely regarded as counter-productive, and earlier this year the EPO conducted a consultation exercise on the effects of Rule 36 and alternative ways of achieving its objectives. This gave rise to considerable hope that the current regime would be abolished or at least modified.
It has now been confirmed that the EPO’s Administrative Council has indeed decided to amend Rule 36, and to allow divisional applications to be filed at any time so long as the parent application is pending. This change will take effect on 1 April 2014, and represents a return to the position that applied before the current rule came into effect. A new provision that will also be introduced at the same time, however, is that the EPO will charge an additional filing fee for any divisional derived from an application that is itself a divisional. This is intended to provide a signal to applicants that long sequences of divisional applications are considered detrimental to the European patent system. Having said that, the amount of the additional fee has yet to be announced and it remains to be seen whether it will truly act as a deterrent.
The abolition of the two-year time limit on the filing of divisional applications is to be welcomed. We will now review all pending applications for which we are responsible in the light of this development. It is particularly important to identify any pending European patent applications on which a divisional application would be beneficial but for which the deadline for filing such a divisional has passed under the current rule. If that application can be kept pending until 1 April 2014, it will once again be possible to file the divisional application.