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Changes to time limits for filing European divisional apps

By John Rule

On the 1st April 2010 the rules regarding filing divisional applications stemming from European Patent Applications changed. The changes in the rules mean that decisions regarding divisional application strategy may need to be made much earlier than previously. 

Before April 2010, currently, the regulations allowed filing of a divisional application from a pending patent application (a “parent”) at any time up until (but not including the day of) publication of the grant of a patent.

However, as from April 2010, any divisional applications filed on the applicants own initiative (voluntary divisional applications) must be filed within 24 months from the first communication issued by the EPO examining division in respect of the parent (i.e. the previous - or an even earlier application in case of a "chain" of applications).  If it is intended to file more than one voluntary divisional application, they must ALL be filed within the 24 month time period of the earliest filed application. 

Divisional applications filed in response to a non-unity objection (“mandatory divisional applications”) must be filed within 24 months from the communication in which the relevant non-unity objection is first raised.

The changes in the regulations will mean that decisions regarding divisional application strategy may need to be made much earlier than previously.  We are therefore recommending that clients review their pending applications to ensure readiness for the new rules. Please contact us if you have any questions about the new rules or if you would like our assistance with preparing your EP patent portfolio in readiness for the new rules.

Other rule changes

Multiple independent claims

Where an application comprises multiple independent claims in the same category the applicant will be given an opportunity to indicate within a period of two months upon which claims the search is to be carried out, Failure to reply to the invitation will result in the search being carried out in respect of the first claims in each category.

Difficult to search applications

Where the EPO consider that the application fails to comply with the convention to such extent that a meaningful search cannot be carried out, so called “complex applications”, then the EPO will invite the applicant to file a statement indicating the subject matter to be searched, in other words, to clarify the subject matter upon which the searched is to carried out.

Mandatory response to search opinion

From 1 April 2010 it became obligatory to respond to the search opinion accompanying the European search report; this response must be filed within a period of six months of publication of the search report.

In the case of Euro-PCT applications applicants must file a response to the written opinion of the International Search Authority (Chapter I report “IPRP”) or the International Preliminary Examination Report, this response must be filed within one month of the issuance of the communication under Rule 161. This communication is usually received around six weeks of entering the European phase.

Basis for amendments

The EPO has introduced a new rule 137(4) which requires that when filing amendments to the application the applicant shall identify the amendments and indicate where support for these amendments can be found in the application, failure do so will result in a deficiency notice requiring a response within one month. We do not expect this new rule to have any material effect since our current working practice provides complies with the new regulation.

Disclosure of search results of other offices

If a search has been carried out by the authority with which the earlier application then applicants are required to file a copy of the results of the search. These search results are due for submission upon filing the European application. In the case of a Euro-PCT application, the search results should be filed at the time of entering the European phase, or without delay after such results have been made available. Failure to file search results will result in a communication being issued inviting the applicant to file the search results or a statement that the search results are not available; failure to respond to this communication will result in the application being deemed withdrawn.


This news item may contain information of general interest about current legal issues, but does not contain legal advice.