EPO Removes Time Limits for Filing Divisional Applications – Why?

By Ben Charig on Monday 4th November 2013.

Background to the time limits

The 24-month time limits were intended to discourage applicants from filing divisional applications with the sole purpose of keeping subject-matter pending at the European Patent Office (EPO). One particular concern was the practice of filing a divisional application shortly before oral proceedings. An applicant might choose to do this so that, if the parent application were refused at the oral proceedings, examination of the same subject-matter could be continued using the divisional application. Another concern was the practice of creating chains of divisional applications, again to prolong pendency of subject-matter. Keeping subject-matter pending in these ways was deemed to create legal uncertainty for third parties and to generate significant extra work for the EPO.

Impact of the time limits

The time limits caused a surge in the filing of divisional applications. Applicants with older applications rushed to file divisionals before 1 October 2010 – the end of the grace period for applications whose 24-month time limits had already expired. The spike in the number of divisional applications was dramatic: • 2009: 7,005 divisionals in the search stage • April 2010 to March 2011: 22,102 divisionals filed. Filing numbers have since returned to a more ‘normal’ level. In the year from April 2012 to March 2013, 9,989 divisional applications were filed. Note though that this is still higher than the 2009 figure. As indicated above, the time limits have not reduced the number of divisional applications. It seems that applicants now choose to file ‘precautionary’ applications before the end of the 24-month time limit for voluntary divisional applications. This often means that an applicant files a divisional application before the likely scope of the parent application is known and thus before it can be determined whether a divisional application is genuinely called for. This increases not only the EPO’s workload and legal uncertainty for third parties but also costs for applicants. The time limits do not appear to have improved legal certainty for applicants because it cannot easily be determined when the possibility of filing a divisional application no longer exists. One reason for this is that a very particular type of objection (a ‘unity of invention’ objection) from the EPO triggers one of the time limits. As a result, the deadline can only be determined by someone familiar with patent law and with the invention in question. Another reason is that the applicant must monitor not just the parent application but also all of its divisional applications to check for the events which trigger the time limits. Moreover, the applicant must continue to monitor all of the applications, since a later event on any of the applications could trigger a new time limit. This is an involved process, even for someone who understands the time limits well. Uncertainty as to how the original rules governing the time limits were to be interpreted caused initial confusion and resulted in a change to the wording of the rules. This confusion was compounded when the EPO acknowledged that entries in its online register of patent applications might not reflect the change in the wording of the rules and that the register might therefore display incorrect information about any given patent application. Following a 2010 decision of the Enlarged Board of Appeal at the EPO, an applicant may now file a divisional application from a case which has been refused at oral proceedings. Consequently, one of the main motivations for introducing the time limits no longer applies: trying to curb the practice of filing a divisional application shortly before oral proceedings is not necessary any more.

User consultation

Earlier this year, the EPO ran an online consultation and invited users to give feedback on the time limits. The results showed that, predominantly, users were dissatisfied with the time limits. Of the 302 responses the EPO received, only 22 were in favour of the time limits. Even the positive responses indicated that changes to the time limits were needed to improve the system. The main criticisms put forward by users were: 1. that applicants have to decide too early whether or not to file divisional applications; 2. that the time limits have not met their objectives; 3. that the time limits are complex and difficult to monitor; and 4. that the negative effects of the time limits are increased by the slow pace of examination.

Removal of the time limits

In view of the issues discussed above, the EPO decided to remove the 24-month time limits. The change will take effect from 1 April 2014 and will bring the rules governing when divisional applications may be filed closer to their form of March 2010. The EPO will implement a different method of trying to control the filing of multiple divisional applications. An additional fee will apply to each divisional application after the first divisional application. The additional fee will increase in value so that a third divisional application is more expensive than the second divisional application, and a fourth divisional application is more expensive than the third divisional application, etc. It remains to be seen whether this method will prove more or less successful at dissuading applicants from filing chains of divisional applications. If you have a query about European divisional patent applications or any other aspect of European patent law, you can reach Ben Charig at [email protected].

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