NEW RULE 36 EPC
The EPO’s Administrative Council decided on October 17, 2013 that the two deadlines for filing divisional applications at the EPO pursuant to R.36 EPC will be abolished as of April 1st, 2014.
From that date onwards, it will again be possible to file a divisional application on the basis of any “pending” European patent application (irrespective of its filing date), and this even if the divisional application is based on a divisional application.
New Rule 36 EPC reads as follows:
Rule 36 - European divisional applications
(1) The applicant may file a divisional application relating to any pending earlier European patent application.
(2) A divisional application shall be filed in the language of the proceedings for the earlier application. If the latter was not in an official language of the European Patent Office, the divisional application may be filed in the language of the earlier application; a translation into the language of the proceedings for the earlier application shall then be filed within two months of the filing of the divisional application. The divisional application shall be filed with the European Patent Office inMunich,The HagueorBerlin.
(3) The filing fee and search fee shall be paid within one month of filing the divisional application. If the filing fee or search fee is not paid in due time, the application shall be deemed to be withdrawn.
(4) The designation fee shall be paid within six months of the date on which the European Patent Bulletin mentions the publication of the European search report drawn up in respect of the divisional application. Rule 39, paragraphs 2 and 3 shall apply.
It is also planned to add a statement to Rule 38 EPC to the effect that the Rules relating to Fees may require an official fee if a divisional application based on a divisional is filed. It is currently not clear whether this additional fee will come into law and what its amount will be.
No further processing will be available if a divisional is not filed in due time, as is already the case now.
In this context, please note that the term « pending application » was clarified by the EPO’s Enlarged Board of Appeal in its decision G1/09:
- An application in the process of grant remains pending until the day before the publication of the mention of the grant.
- A refused application remains pending until the expiry of the time limit for the filing of an appeal. If no appeal is filed, the application does not retroactively cease to be pending at the date of the refusal decision. Hence, there is no need to file an appeal as a reaction to a refusal in order to keep the application pending and preserve the right to file a divisional application.
- Thus, a divisional application can be validly filed as long as the time limit for appeal has not expired.
If you have any questions regarding this matter, feel welcome to contact LAVOIX Munich.
 “Voluntary” divisional : 24 months from the Examining Division’s first communication in the root application; “Lack of unity” divisional: 24 months from the Examining Division’s first lack of unity objection in the root application
Publication date : October 2013