25 February, 2010

Shortened timeframe to file European divisional applications

Shortened timeframe to file European divisional applications

Effective 1 April 2010, the European Patent Office (EPO) is changing its practice by shortening the time limit for filing a divisional application.  This will potentially restrict an Applicant’s options to file one or more divisional applications at the EPO.

Due to transitional provisions of limited duration, these changes are potentially of most immediate concern to Applicants of already pending European patent applications.  Please contact us if you have any questions regarding your pending European patent application.

New Deadlines for Filing Divisional Applications

The rules introduced by the EPO for determining a shortened deadline for filing a divisional application are complicated.  A divisional application can ordinarily be filed no later than 24 months from the date of certain communications issued by the Examining Division on the earliest application in a sequence of applications, or a communication from the Examining Division raising non-unity-of-invention objections for the first time.  A communication raising a non-unity-of-invention objection for the first time can reset the 24-month time frame to run from the later communication raising that objection.  These deadlines do not apply to earlier communications, such as the European Search Report, from the Search Division of the EPO.  The deadline is not extendible.

Patent Applications Already Pending on 1 April 2010

If the deadline for filing a divisional application under the rule changes would expire before 1 October 2010, the deadline is extended to that date.  Thus, the changes are of immediate concern for a pending European patent application where the relevant communication on the earliest application issued on or before 1 October 2008.

Applicants should therefore have their pending European patent applications promptly reviewed to determine if any divisional applications must be filed by the October deadline.  This should be done to avoid losing patent protection for claims cancelled in response to a unity-of-invention objection or for disclosed subject matter that is patentable but not yet claimed.  If a purported divisional application is not filed in time, the EPO will treat the application as an independent application with a later priority date and filing date.  This could render the new patent application invalid.

Author: Scott Berggren, Principal

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