Home » Law » European Divisional Applications – EPO Consultation

European Divisional Applications – EPO Consultation

Keltie LLP

K2 IP Limited

About IPcopy

IPcopy is an intellectual property related news site covering a wide variety of IP related news and issues. We will also take the odd lighthearted look at IP. Feel free to contact us via the details on the About Us page.

Disclaimer: Unless stated otherwise, the contributors to IPcopy (the "IPcopy writers") are patent and trade mark attorneys or patent and trade mark assistants at Keltie LLP or are network attorneys at K2 IP Limited. Guest contributors will be identified.

This news site is the personal site of the contributors and is not edited by the authors' employer in any way. From time to time however IPcopy may publish practice notes, legal updates and marketing news from Keltie LLP or K2 IP Limited. Any such posts will be clearly marked.

This news site is for information purposes only. Information posted to this news site is not legal advice and should not be taken as such. If you require IP related legal advice please contact your legal representative.

For the avoidance of doubt Keltie LLP and K2 IP Limited have no liability as to the content of IPcopy and any related tweets or social media posts.

epologoRule 36 EPC was amended in 2010 to introduce 24 month time limits for filing divisional European patent applications from a parent European patent application. One purpose of the rule amendment was to address the issue of precautionary divisional filings that were filed to avoid adverse decisions.

An online consultation, with a closing date of 5 April 2013, recently popped up on the EPO’s website (here) announcing that the EPO is going to take another look at Rule 36 EPC and the time limits for filing divisional applications.

Rule 36 EPC currently means that, with some limited exceptions, an applicant has to file any divisional applications they want within 24 months of the first examination report issuing. Given that it can often take over a year to get a further communication from the Examiner following the applicant’s response to the first examination report, this time period can mean that an applicant is forced to decide on whether to file a divisional application before they know what the examiner thinks of their earlier arguments. This is obviously not an ideal situation for an applicant!

In a slightly ironic turn of events it seems, from the EPO’s own consultation announcement, that the number of divisional applications has actually gone up since the rule was amended!

The consultation asks for feedback and assessment on Rule 36 EPC and asks if it could be improved in any way (yes!). One suggestion presented within the consultation itself is the possibility of extending the time period from 24 months to either 48 or 60 months from the first exam report.

So, if you’ve ever taken issue with Rule 36 EPC, now is your time to tell the EPO what you think. Don’t delay, the consultation is only open for a few weeks.

Mark Richardson      11 March 2013


Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s

%d bloggers like this: