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October 22, 2013

Important news about Rule 36 EPC

European Patent Organisation decides to abolish the twenty-four months time-limit for filing divisional applications (current Rule 36(1) EPC).

The Institute of Professional Representatives before the European Patent Office (EPI) has informed its members on 18 October 2013 of a decision of the Administrative Council of the European Patent Organization of 16 October 2013 to abolish the highly controversial 24 months time-limit for filing divisional applications under current Rule 36(1) EPC. Under the current regime, which is in force since 1 April 2010, applicants can file divisional applications for pending earlier European patent applications, only if

(a)  the divisional application is filed before the expiry of a time-limit of 24 months from the Examining Division’s first communication in examination*, or

(b)  if the divisional application is filed within 24 months from any communication in which the Examining Division has raised a non-unity objection for the first time.

The decision to abolish the 24 months time limitation was taken after the current regime was heavily criticized by users of the EPC, and after a survey revealed that the vast majority of EP applicants disapproved of the rule.

The Administrative Council’s decision will generally re-instate the earlier regime, under which regime divisional applications could be filed with respect to any pending European patent application. The Administrative Council, however, decided to introduce an additional fee for second-generation divisional applications (new Rule 38(4) EPC). This must be seen as an attempt to reduce the overall number of such applications.

The changes will come into effect on 1 April 2014. The new provisions will apply to all divisional applications filed on or after that date.

Should you have any questions regarding the rule changes and the impact it may have on your patent portfolio, please contact your Zacco patent attorney.


* see text of Rule 36(1) EPC for an accurate definition of “first communication in examination”


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