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NEW RULES for filing EP DIVISIONAL APPLICATIONS with EPO
- as of APRIL 1, 2010 -
Effective April 1, 2010, new provisions are setting relating to R.36(1) and (2) EPC as to filing an EP divisional application with European Patent Office (EPO).
Major amendments shall be read as following .
Upon pendency of the parent application, the Applicant is entitled to file one or more divisional application(s) based thereof, if at least one of the two herebelow periods has not yet expired:
(a) Voluntary divisional application, filed at Applicant’s request, under R. 36(1)(a) EPC
Amended R. 36(1)(a) EPC provides that an EP divisional application may be filed on the basis of a pending earlier application before the expiry of a time limit of 24 months from the EPO Examining Division's first communication in respect of the earliest application for which the communication was issued.
So far, if the pending earlier application lapses or is withdrawn before the first communication relating to it is sent in examination proceedings, then a divisional application may not longer be filed. The same applies if the earlier (parent) application ceases to be pending after the notification of the first communication referred to above, but before expiry of the 24-month period.
The "EPO Examining Division's first communication " is a communication under Art. 94(3) and R.71 (1),(2) EPC or, where appropriate, R.71(3) EPC.
Please note that notification of the search opinion does not cause the 24-month period to start.
In the case of a sequence of EP divisional applications, the 24-month time limit is to be calculated from the date on which the EPO Examining Division's first communication was issued for the earliest application in the sequence.
(b) Mandatory divisional application, filed in responde to a non-unity objection, under R. 36(1)(b) EPC
Amended R. 36(1)(b) EPC provides that an EP divisional application may be filed on the basis of a pending earlier application before the expiry of a time limit of 24 months from any communication issued by EPO in which the Examining Division raises a non-unity objection according to Art. 82 EPC, with the provision that this finding of lack of unity is raised for the first time in the said communication.
A non-unity objection is typically raised in the Examining Division's first communication pursuant to Art. 94(3) and R. 71(1), (2) EPC or, if already raised at the search stage, maintained therein.
The confirmation of a finding of lack of unity in a subsequent communication from the Examining Division does not cause the period for mandatory division to start again.
A new time limit of 24 months can only be triggered by a communication from the Examining Division in which a new, different non-unity objection, is raised.
Please note that a notification from the Search Division raising an objection of a lack of unity of invention does not cause the 24-month period to start.
Please also note that the communication issued by EPO that triggers the 24 month-period does not refer to communications from EPO acting as International Authority (International Searching Authority -ISA- or International Preliminary Examining Authority -IPEA-) during PCT procedure.
Transitional provisions
The amended version of R. 36 EPC will apply only to EP divisional applications filed after its entry into force, i.e. on or after April 1, 2010.
If the time limits provided for in amended R. 36(1) EPC have expired before April 1, 2010, a divisional application may still be filed within October 1, 2010.
If the relevant time limits are still running on 1 April 2010, they will continue to do so for not less than six months. In other words, for any applications pending on 1 April 2010 and on which a first communication from the Examining Division has been issued or a non-unity objection has been (subsequently) raised, so that the time limits are still running on that date, the time limit will not expire before October 1, 2010.
In view of new captioned provisions, we strongly recommend you to evaluate if you are interested in filing EP divisional applications based on pending EP applications and give us instructions no later than February 28, 2010.
Do not hesitate to contact us for any clarification and advice.
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