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INFORMATION FROM THE EPO

Notice from the European Patent Office dated 20 August 2009 concerning amended Rule 36(1) and (2) EPC (European divisional applications) and consequential amendments to Rules 57(a) and 135(2) EPC

By decision of 25 March 20091, the Administrative Council of the European Patent Organisation amended Rule 36(1) and (2) EPC as to the requirements for filing European divisional applications and the language in which they are to be filed. Consequential amendments were necessary, first to Rule 57(a) EPC, in order to add the filing of the translation of a divisional application to the list of formal requirements to be examined after the application has been accorded a date of filing; and second, to Rule 135(2) EPC, in order to exclude the periods introduced for the filing of divisional applications from further processing.

The present notice gives more information about these amendments and the transitional provisions applicable until the revised Guidelines for Examination in the EPO become available.

I. Filing requirements for divisional applications

With regard to when a divisional application can be filed, there are two requirements which must be met:

(i) the application to be divided (the "parent" application on which the divisional is based) must be pending, and

(ii) at least one of the two periods mentioned below must not yet have expired:

(a) the period for voluntary division under Rule 36(1)(a) EPC or

(b) the period for mandatory division under Rule 36(1)(b) EPC, where applicable.

The term "earlier application" in Rule 36(1) EPC refers to the immediate parent application on which the divisional application is based. This term is distinct from the term "earliest application" also appearing in Rule 36(1) EPC, although, in the case of a first-generation divisional application (where the immediate parent is not itself a divisional), they both refer to the same application.

(a) Voluntary division

Amended Rule 36(1)(a) EPC provides that a divisional application may be filed on the basis of a pending earlier application before the expiry of a time limit of 24 months from the examining division's first communication in respect of the earliest application for which a communication has been issued.

The " examining division's first communication" is a communication under Article 94(3) and Rule 71(1), (2) EPC or, where appropriate, Rule 71(3) EPC. The notification of the search opinion does not cause this 24-month period to start because the examining division is not yet responsible for the application. However, in cases where the applicant has waived his right to receive the communication according to Rule 70(2) EPC, then no search opinion is issued, but rather a communication according to Article 94(3) and Rule 71(1), (2) EPC. Notification of this communication does cause the 24-month period to start.

The earlier (parent) application on which the divisional is to be based has to be pending at the time the divisional application is filed. If it lapses or is withdrawn before the first communication relating to it is sent in examination proceedings, then a divisional application may no longer be filed. The same applies if the earlier (parent) application ceases to be pending after the notification of the first communication referred to above, but before expiry of the 24-month period.

In the case of a sequence of European divisional applications, the 24-month time limit is to be calculated from the date on which the examining division's first communication was issued for the earliest application in the sequence, e.g. the grandparent application.

(b) Mandatory division

Under new Rule 36(1)(b) EPC a divisional application may be filed on the basis of a pending earlier application before the expiry of a time limit of 24 months from any communication in which the examining division raises a non-unity objection according to Article 82 EPC, with the proviso that this finding of lack of unity is raised for the first time in the said communication.

A non-unity objection is typically raised in the examining division's first communication pursuant to Article 94(3) and Rule 71(1), (2) EPC or, if already raised at the search stage, maintained therein. The confirmation of a finding of lack of unity in a subsequent communication from the examining division does not cause the period for mandatory division to start again. A new time limit of 24 months can only be triggered by a communication from the examining division in which a new, different non-unity objection is raised.

The notification of a summons to oral proceedings or of the minutes of a telephone call or a personal interview, but also the date of oral proceedings or of a telephone call or a personal interview (depending on whether the relevant minutes are notified at a later date or immediately), can also qualify as a trigger for the filing of a mandatory divisional application, provided that the finding of lack of unity is raised for the first time on the occasion in question..

In contrast, a communication under new Rule 137(5) EPC cannot cause the period for mandatory division to start, as the relevant objection does not qualify as an objection under Article 82 EPC.

Further, the notification of a search opinion raising an objection of a lack of unity of invention does not cause the period for mandatory division to start according to Rule 36(1)(b) EPC, because the examining division is not yet responsible for the application. However, in cases where the applicant has waived his right to receive the communication according to Rule 70(2) EPC, then no search opinion is issued, but rather a communication according to Article 94(3) and Rule 71(1), (2) EPC. Notification of this communication, where it raises an objection of a lack of unity, does cause the 24-month period for mandatory division to start. For first-generation divisional applications (where the earlier application on which the divisional is based is not itself a divisional), it is not possible for the period for mandatory division to expire earlier than the period for voluntary division. In most cases the two periods will expire at the same time, because the unity objection is typically raised in a first communication from the examining division or, if already raised at the search stage, maintained therein.

(c) General matters

The ten-day rule as provided for in Rule 126(2) EPC applies for the purposes of calculating the 24-month time limit for both voluntary and mandatory divisional applications.

II. Language requirements

According to Rule 36(2) EPC as amended, a divisional application must be filed in the language of the proceedings of the earlier (parent) application. If the latter was not in an official language of the European Patent Office, the divisional application may be filed in the language of the earlier application. A translation into the language of the proceedings for the earlier application must then be filed within two months of the filing of the divisional application. Due filing of the translation is examined pursuant to Rule 57(a) EPC.

III. Means of redress

The legal consequence of non-compliance with the 24-month time limit is that the application cannot be treated as a European divisional application.

Taking into account the considerable length of the time limits involved, the Administrative Council decided to exclude them from further processing by amending Rule 135(2) EPC accordingly. Re-establishment of rights under Article 122 and Rule 136(1), (2) EPC, however, remains available in order to remedy the failure to observe either 24-month time limit.

IV. Transitional provisions

The amended version of Rule 36 EPC will apply only to European divisional applications filed after its entry into force, i.e. on or after 1 April 2010.

If the time limits provided for in amended Rule 36(1) EPC have expired before 1 April 2010, a divisional application may still be filed within six months of that date, i.e. until 1 October 2010.

If the relevant time limits are still running on 1 April 2010, they will continue to do so for not less than six months. In other words, for any applications pending on 1 April 2010 and on which a first communication from the examining division has been issued or a non-unity objection has been (subsequently) raised, so that the time limits are still running on that date, the time limit will not expire before 1 October 2010.