New rules put time limit on divisional applications

On 1st April 2010 new Implementing Regulations to the European Patent Convention will enter into force. The regulations will have a major impact on the hitherto generous provisions regarding the filing of divisional applications in the European Patent Office (EPO) patent prosecution process. 

At present, a divisional application may be filed at any time while the parent application is pending. Once filed, a divisional application:

• Becomes fully valid in its own right.
• Is procedurally independent of its parent application.
• Is not affected by the subsequent fate of the parent application.

The divisional application may serve as parent application to an arbitrary number of second-generation divisional applications, which all retain the priority date of the first parent application. Each divisional application has its procedural clock set back to zero, with the caveat that the expiry date of all patent applications in the same family of divisional applications remains the same (ie, 20 years from the filing date of the earliest application).

For every divisional application, the whole examination process starts anew. Furthermore, the whole content of the parent application (ie, the original claims, specification and figures) from which the divisional application is descended is claimable subject matter. Thus, it is even possible to submit claims directed at embodiments completely unrelated to anything claimed in the parent application. 

This is a powerful procedural tool. For example, it is possible to pursue a set of claims with narrow scope to ensure the speedy granting of a patent, and simultaneously to pursue a divisional application with wider claims. Thus, any restriction of the scope of the claims need not be binding, since its effect can be undone with the submission of a divisional application.

The new Implementing Regulations impose time limits for the filing of a divisional application. According to these, a divisional application may be filed within two years of the first office action for any of the applications in the genealogy of divisional applications. This will usually be the first office action of the original parent application. After the expiry of this time limit, a divisional application may be filed only within two years of a finding by the EPO that the invention lacks unity. Of course, depending on the patent application in question, such a finding may never be issued. If neither of these conditions is met, a divisional application cannot be filed.

While the claimable subject matter in a divisional application remains subject only to the existing restrictions - provided that the filing of a divisional application is allowed in the first place - a pending patent application may not be amended to disrupt deliberately the unity of invention.

There are two troubling issues with the new rules. The Implementing Regulations introduce a subtle but critical paradigm shift regarding the calculation of time limits. At present, the time limits to be observed depend only on the formal character of the communication from the EPO (ie, on the article or rule pursuant to which the communication has been issued). This is no longer the case. In general, a firm has a department for the supervision of time limits staffed with trained assistants. At present, they need consider only the article or rule pursuant to which the communication has been issued to calculate any resulting time limits correctly . With the new regulations, a substantive analysis of the communication is necessary to determine whether a time limit applies. Thus, the updated processes for time limit calculation will need to involve people with advanced qualifications. The necessary amendment of a tried and tested workflow must minimize the likelihood of error in this highly sensitive area. 

Second, under the new rules an event for one application can determine the time limit for a second application. In particular, and as described above, the first office action for the parent application will generally determine the two-year time limit for any divisional applications. The existing clear separation between each application is breached. This makes the supervision and determination of time limits - already complicated by the dependence on material findings - even more complex.

What does this mean for companies with IP interests in Europe? IP stakeholders will need to be aware of the introduction of these time limits and bear them in mind when making strategic judgments. Management must keep in mind that the decision to file a divisional application cannot be postponed in the same way as before. It is up to the legal representatives overseeing the relevant patent applications to calculate, observe and draw attention to the applicable time limits. This information must inform the strategic decisions. Thus, management must cooperate even more closely with the law firms in charge with regard to their strategic patent policy.

Even more significantly, the initial formulation of the patent application in Europe, and particularly of the claims, gains further importance. Already Europe has the strictest policy of all major patent jurisdictions with regard to the prohibition of extending claimed subject matter beyond the content of the originally filed application. Claiming a feature based only on the patent specification without taking a verbatim quote from the text is already quite tricky. It now becomes even more imperative to reflect all salient features in the original claims, in particular those features that could conceivably provide cornerstones for spun-off inventions further down the road in the application process. In other words, if it is conceivable that a patent application may cover more than one invention, the features distinguishing these hypothetical sub-inventions must be articulated in the claims from the beginning. Thus, it is more important than ever to establish a strategic coordination with the patent attorney in charge at the very earliest stage of patent prosecution.