The European Patent Office Extends the Time for Filing Divisional Applications

October 21, 2013

By: Mary K. Murray, Ph.D.

Hamilton Brook Smith Reynolds Alert

Updated January 2014 to Reflect New Fee Rates

  • The two-year limitation on filing a divisional application in Europe is being repealed.
  • After April 14, 2014, an Applicant can file a divisional application in Europe at any time during the pendency of a parent application.

On October 18, 2013, the European Patent Office (EPO) announced an amendment to provisions of the European Patent Convention for requirements on the timing for filing divisional applications.  Since April 1, 2010, the EPO has limited the time to file a divisional application to two years from the first communication by the EPO examining division.  Under the new rule, which will become effective on April 1, 2014, the time period for filing a divisional application will be as long as the parent application is pending in the EPO.  In other words, a divisional application may be filed any time prior to grant of a patent on the parent application. 
 
The new rule reverts back to prior rules of the EPO that were replaced in April 1, 2010 by the two-year time limit.

The details of the change in the rules have yet to be published by the EPO.  However, according to a number of European associates, the EPO is projecting that an additional fee will be required to file any divisional application from what is considered to be "second or subsequent generation" applications.  Confirmation and the amount of any such fees for filing divisional applications from existing divisional applications are expected to be decided during the EPO Budget and Finance Committee Meeting scheduled for October 29, 2013.
 
If you have a European patent application for which the two-year deadline from the first communication by the EPO examining division has already expired, you may wish to keep your application pending until at least April 1, 2014 so that a divisional application may be filed.  Expansion of the time for filing a divisional application will provide the Applicant with flexibility to pursue additional applications while monitoring the activities of third parties.

Note:  On December 13, 2013, the EPO announced updated Rules relating to fees for filing European patent applications, on or after April 1, 2014, which indicate an increasingly higher filing fee for subsequent divisional applications, up to a fifth and subsequent generation, filed after a first generation divisional application. 

 

Overview

October 21, 2013

By: Mary K. Murray, Ph.D.

Hamilton Brook Smith Reynolds Alert

Updated January 2014 to Reflect New Fee Rates

  • The two-year limitation on filing a divisional application in Europe is being repealed.
  • After April 14, 2014, an Applicant can file a divisional application in Europe at any time during the pendency of a parent application.

On October 18, 2013, the European Patent Office (EPO) announced an amendment to provisions of the European Patent Convention for requirements on the timing for filing divisional applications.  Since April 1, 2010, the EPO has limited the time to file a divisional application to two years from the first communication by the EPO examining division.  Under the new rule, which will become effective on April 1, 2014, the time period for filing a divisional application will be as long as the parent application is pending in the EPO.  In other words, a divisional application may be filed any time prior to grant of a patent on the parent application. 
 
The new rule reverts back to prior rules of the EPO that were replaced in April 1, 2010 by the two-year time limit.

The details of the change in the rules have yet to be published by the EPO.  However, according to a number of European associates, the EPO is projecting that an additional fee will be required to file any divisional application from what is considered to be "second or subsequent generation" applications.  Confirmation and the amount of any such fees for filing divisional applications from existing divisional applications are expected to be decided during the EPO Budget and Finance Committee Meeting scheduled for October 29, 2013.
 
If you have a European patent application for which the two-year deadline from the first communication by the EPO examining division has already expired, you may wish to keep your application pending until at least April 1, 2014 so that a divisional application may be filed.  Expansion of the time for filing a divisional application will provide the Applicant with flexibility to pursue additional applications while monitoring the activities of third parties.

Note:  On December 13, 2013, the EPO announced updated Rules relating to fees for filing European patent applications, on or after April 1, 2014, which indicate an increasingly higher filing fee for subsequent divisional applications, up to a fifth and subsequent generation, filed after a first generation divisional application. 

 

Back to the Top