EPO removes time limit to file divisional applications, but charges additional filing fees

The current time limit to file divisional patent applications will be removed as part of changes to the European Patent Convention (EPC) effective 1 April 2014. However, substantial official fee increases will apply to all second and subsequent generation divisional applications.

A divisional application claims a further invention described in a previously filed “parent” application. The divisional is deemed to have the same effective filing date as the parent so that the parent is not ‘prior art’ against the divisional.

Currently, a European Patent (EP) divisional application must be filed:

  • within 2 years of the first Examiner’s report on the parent application, or
  • 2 years from the first Examiner’s report with an objection that the application claims more than one invention.

The time limit was imposed to give the public certainty as to the scope of patent rights that ultimately eventuate from any patent application within a reasonable time frame. However, the time limit was deeply unpopular with many patent applicants who were forced to file their divisional applications prior to the 2 year deadline rather than when the divisional was required. Often the most commercial form of claiming the invention is not apparent until many years after the parent is filed.

In an effort to compromise, the European Patent Office (EPO) has removed the time limit, but imposed substantial additional fees for any second or subsequent generation divisional application. A second generation divisional has a ‘parent’ application which is itself a divisional. A third generation divisional has a parent divisional as well as a ‘grand parent’ divisional, and so on.

The added costs are a disincentive for applicants who file long chains of divisionals. A series of subsequently filed divisionals provides the option of ‘crafting’ claims specifically targeted to future competitor activity. A divisional can only be filed while the parent is pending (i.e. not yet granted), so the practice of maintaining a chain of divisionals for added room to manoeuvre during commercial disputes is a common strategy.

In light of these changes, any applicants with pending EP applications (possibly pending divisional EP applications) that are currently beyond the time limit for filing a divisional application, may wish to take steps to keep the application pending until 1 April 2014 when the new laws take effect. On 1 April, these applications can once again become parents for divisional applications claiming specific aspects of an invention described in the parent. Anyone wishing to exploit the new European divisional application rules should get in touch with Watermark to explore their options.