Changes to EPO rules for filing divisional patent applications (from 1 April 2014)
Since 1 April 2010, it has been possible to file a divisional patent application based on a pending European patent application only if:
- the divisional application is filed before the expiry of a time limit of 24 months from the first communication from the Examining Division in respect of the earliest application for which a communication has been issued, (note the language “earliest” referring to the ultimate parent application i.e. not an application which is itself a divisional application)
- the divisional application is filed before the expiry of a time limit of 24 months from any communication in which the Examining Division has objected that the earlier application lacks unity, provided it was raising that specific objection for the first time. (Note the language “earlier”, which could refer to an application which is itself a divisional application).
On 1 April 2014, the EPO changed Rule 36 EPC to remove these two restrictions and enable Applicants to file a divisional application based on any pending application.
This rule change is excellent news for Applicants, who will no longer be forced to make a final decision about whether or not to file any divisional applications before the expiry of an arbitrary time limit. As things stood before 1 April 2014, on expiry of the 24 month time limit, examination of the application may have been ongoing, there might have been unresolved patentability issues and a second examination report might not even have been issued.
Importantly, an effect of this rule change is also that, for those applications for which the 24 month time limit had expired, the window for filing a divisional application has now re-opened.
Changes to rules on unity for PCT applications entering the European Regional Phase (from 1 November 2014)
Our discussion will focus on PCT applications entering the European Regional Phase (“Euro-PCT applications) for which the European Patent Office is not the International Search Authority (ISA) or the Supplementary International Search Authority (SISA), as this is usually the case for Australian Applicants.
If the ISA raises an objection of lack of unity during the international phase, it will invite the Applicant to pay additional search fees in respect of invention(s) other than the first invention. If additional search fees are paid, the supplementary international search is carried out by the SISA.
When a PCT application enters the European Regional Phase and the ISA was not the EPO, the EPO provides the Applicant with the opportunity to amend the application, within 6 months, before a supplementary search is carried out.
Until 1 November 2014, for a PCT application entering the European Regional Phase, for a claim set which the EPO considers to lack unity, the EPO’s supplementary search will only cover the invention first mentioned in the claims (Rule 164(1) EPC).
Also, until 1 November 2014, for a PCT application entering the European Regional Phase, for which neither the ISA nor the SISA was the EPO, if the Examining Division finds that the claims lack unity, or protection is sought for an invention not covered by the supplementary European search report, it shall invite the Applicant to limit the application to one invention covered by the supplementary European search report (Rule 164(2) EPC) i.e. the Applicant must limit to the only invention searched by the EPO (EPO Guidelines F-V, 13.2 and E-VIII, 4.2). The EPO will not issue any invitation to pay additional search fee(s) and thus there is no opportunity to have the additional invention(s) searched.
Therefore, under the current rules, for a Euro-PCT application which is deemed by the ISA and the EPO to lack unity, for which
- the ISA was not the EPO,
- no additional search fees were paid during the international phase and
- the invention of greatest commercial interest is not first-mentioned in the PCT claims,
it is very important to amend the claims before the supplementary European search is carried out to mention the invention of greatest commercial interest first. If the claims are not amended in this way and the EPO agrees with the ISA’s finding of lack of unity, the invention of greatest commercial interest will not be searched when the EPO carries out the supplementary European search. The EPO will not issue an invitation to pay additional search fees so, in order to protect the subject matter of greatest commercial interest, a divisional application must be filed. This of course results in extra expense.
Also, currently, for a Euro-PCT application which
- is deemed to be unified by the ISA (which is not the EPO) but
- is deemed to lack unity by the EPO on carrying out its supplementary European search (for example, as a result of the identification of a new citation which results in an ex post facto lack of unity),
only the first invention identified by the EPO will be searched. This means that if the invention of greatest commercial interest is not identified as the first invention by the EPO when the supplementary search is carried out, then the search will not cover the invention of greatest commercial interest. Again, the EPO will not issue an invitation to pay additional search fees. Thus, to protect the subject matter of greatest commercial interest, a divisional application needs to be filed, which incurs additional cost. This situation could be considered to be particularly unfair to Applicants as there may be no advance warning of the lack of unity.
A change to the EPO rules coming into force on 1 November 2014 will change this. From that date, if the EPO considers that the claim set of a PCT application entering the European Regional Phase to lack unity, it will:
- draw up a partial supplementary search report on those parts of the application which relate to the first invention (or unified group of inventions) first mentioned in the claims,
- inform the Applicant that, for the supplementary European search report to cover the other inventions, a further search fee must be paid, in respect of each invention involved (within a period of two months) and
- draw up the supplementary European search report for the parts of the application relating to inventions in respect of which search fees have been paid
This rule change applies to Euro-PCT applications for which the European Supplementary Search is not drawn up before 1 November 2014.
In short, from 1 November 2014 the European supplementary search will continue to relate to the first mentioned invention. However, additional search(es) will be available for PCT applications entering the European Regional Phase, which the EPO finds to relate to more than one invention (or group of inventions). The Applicant can then amend to any invention searched by the EPO rather than being forced to either limit to the first invention or file a divisional application.
This change to the Rule 164 EPC gives Applicants more flexibility and will reduce costs in certain circumstances (such as those discussed above in the context of the current rules) because it can avoid the need to file a divisional application.
These changes in the rules are good news for Applicants and are being welcomed by European patent attorneys.