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CHANGES TO THE EUROPEAN PATENT CONVENTION IMPLEMENTING REGULATIONS REGARDING THE FILING OF DIVISIONAL APPLICATIONS

As of April 1, 2010, significant changes have been applied to the EPC implementing regulations, which affect the practice in filing and prosecuting European patent applications (See Administrative Council Decisions CA/D 2/09 and 3/09). These changes have been introduced by the EPO to increase the "quality" of the patents that are granted.

According to amended Rule 36 EPC, the EPO has introduced a cut-off date for the filing of divisional applications.

Before April 1, 2010, a divisional application could be filed from any pending European patent application. In other words, any divisional application could be filed before the "parent" application was granted, refused or withdrawn.

Now, any divisional application needs to be filed:
- within 24 months from the first examination report issued on the earlier application ("voluntary" divisional); or
- within 24 months from a non-unity objection under Art.82 EPC raised for the first time in an examination report ("mandatory" divisional).

It is important to note that the 24 month time limit for filing divisional applications starts from the first communication from the Examining Division on the earliest related application. Therefore, in the case of a series of divisional applications, where later divisional applications are divided from earlier divisional applications, all divisional applications must still be filed within 24 months from the first communication on the original parent case.

These time limits are not extendable, and "further processing" under Art.121 EPC will be ruled out. Thus, if a time limit is missed, the only option is a request for reestablishment of rights under Art.122 EPC.

In addition to these new time limits, the previous requirement that the parent application must be pending at the time of filing the divisional application still stands. Therefore, any divisional application must be filed before the parent application is granted, refused, or withdrawn; even if this is less than 24 months from the first communication from the Examining Division on the parent.

This new provision applies to the filing of divisional applications on or after April 1, 2010. However, according to the transitional provisions, if a Rule 36 time limit expires before April 1, 2010, a divisional application may still be filed within six months, i.e. up to October 1, 2010, while if a Rule 36 time limit is running on April 1, 2010, it will continue to do so for no less than six months.
 

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