Divisional applications under the European Patent Convention

In the procedure before the European Patent Office

European Patent Office

The European Patent Office is one of the two organs of the European Patent Organisation , the other being the Administrative Council. The EPO acts as executive body for the Organisation while the Administrative Council acts as its supervisory body as well as, to a limited extent, its legislative...

(EPO), divisional applications can be filed under . Such a divisional application, sometimes called European divisional application, is a new patent application

Patent application

A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...

which is separate and independent from the parent application, unless specific provisions in the European Patent Convention

European Patent Convention

The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...

(EPC) require something different.

"The procedure concerning the divisional application is in principle independent from the procedure concerning the parent application and the divisional application is treated as a new application.... Although there are some connections between the two procedures (e.g. concerning time limits), actions (or omissions) occurring in the procedure concerning the parent application after the filing of the divisional application should not influence the procedure concerning the latter...."

The practice relating to the filing of divisional applications under the EPC was clarified by the Enlarged Board of Appeal of the EPO in June 2007. The Board held that a divisional application which on filing contained subject-matter extending beyond the content of the earlier application as filed could be amend

Amendments under the European Patent Convention

Article 123 of the European Patent Convention relates to the amendments under the EPC, i.e. the amendments to a European patent application or patent, and notably the conditions under which they are allowable...

ed later to remove the deficiency, even at a time when the earlier application is no longer pending.

Background

The possibility to file a divisional application is provided in many patent systems and is guaranteed by Article 4.G. of the Paris Convention for the Protection of Industrial Property

Paris Convention for the Protection of Industrial Property

The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, was one of the first intellectual property treaties. It established a Union for the protection of industrial property...

of 1883, to which 173 countries are Contracting Parties. As to the nature of a divisional application, some basic characteristics are as follows:

"A divisional application is an application which derives from an earlier application. It is filed after the earlier application (usually some years later), but keeps the same filing and priority dates as the earlier application. That way the divisional is not affected in terms of its patentability by any publications which occur between the filing of the earlier application and the filing of the divisional. The earlier application is often referred to as the "parent"."

Time limit for filing a divisional application

Previously, a divisional application could be filed based on any pending earlier European patent application. The conditions for filing divisional applications regarding the time limit to be met have however been modified several times since the entry into force of the European Patent Convention in the 1970s, and changed again on April 1, 2010. What has not been changed however is that a divisional application can by no means be filed after grant of a European patent, i.e. based on a European patent. A divisional application can only be filed based on a pending European patent application, but, currently, not based on any of them.

Furthermore, it was held in Board of Appeal decision J 18/09 that a divisional application cannot be validly filed based on a PCT application before entry into European regional phase, as later confirmed in Enlarged Board of Appeal decision G1/09. In other words, "a Euro-PCT-application not having entered the European phase is not a pending earlier European application in the sense of Rule 36(1) PCT". This contrasts with the situation in the United States, as laid out in the U.S. Manual of Patent Examining Procedure

Manual of Patent Examining Procedure

The Manual of Patent Examining Procedure is published by the United States Patent and Trademark Office for use by patent attorneys and agents and patent examiners. It describes all of the laws and regulations that must be followed in the examination of U.S. patent applications, and articulates...

(MPEP).

Situation prior to April 1, 2010

Prior to 1 April 2010, it was only required that the parent application be pending at the time the divisional application is filed. A divisional application of a European patent application could be filed for any pending application up to the day preceding the mention of grant of the European patent, but not including the date of grant.

New rules as of April 1, 2010

As of April 1, 2010,

"divisional applications on the applicant's own initiative (so-called voluntary divisional applications) will need to be filed within a period of two years from the first communication by the EPO examining division in respect of the parent (i.e. the previous) or an even earlier (in case of a "chain" of applications) application."

Rule 36(1) EPC has been amended to read as follows:

"(1) The applicant may file a divisional application relating to any pending earlier European patent application, provided that:

the divisional application is filed before the expiry of a time limit of twenty-four months from the Examining Division's first communication in respect of the earliest application for which a communication has been issued, or
the divisional application is filed before the expiry of a time limit of twenty-four months from any communication in which the Examining Division has objected that the earlier application does not meet the requirements of Article 82, provided it was raising that specific objection for the first time."

New Rule 36(1)(a) introduces a time limit for voluntary division of the parent application, while Rule 36(1)(b) provides a time limit for mandatory division of the parent application in case of a lack of unity

Unity of invention under the European Patent Convention

Under , a European patent application must "relate to one invention only or to a group of inventions so linked as to form a single general inventive concept"...

under . "Mandatory" in that sense means that, in order to cover each of the non-unitary inventions (i.e. the inventions that are non-unitary in relation to the invention which will be the subject of the parent application), one or more divisional applications need to be filed. However, if the applicant decides not to seek patent protection for the non-unitary inventions, no divisional applications need to be filed.

In a decision dated October 26, 2010, the Administrative Council

Administrative Council of the European Patent Organisation

The Administrative Council of the European Patent Organisation is one of the two organs of the European Patent Organisation , the other being the European Patent Office . The Administrative Council acts as the Organisation's supervisory body as well as, to a limited extent, its legislative body...

further specified, or clarified, that "the Examining Division's first communication" referred to in Rule 36(1)(a) EPC had to be a communication under , and , or .

Further requirements

European divisional applications must be filed directly or by post with one of the filing offices of the EPO, i.e. at the European Patent Office at Munich, The Hague, or Berlin. It may also be filed using the so-called epoline online filing software

Epoline

epoline is a set of web-based software programs and services enabling applicants, patentees and their representatives to file patent applications online before the European Patent Office , as well as to monitor the status of patent applications during their prosecution and patents during an...

. The filing of a European divisional application with a national authority (such as a national patent office) has no effect in law.

External links

: European divisional applications (in part A: Guidelines for formalities examination): Divisional applications (in part C: Examination procedure): Divisional applications