Divisional applications under the European Patent Convention


During the grant procedure before the European Patent Office, divisional applications can be filed under. A divisional application, sometimes called European divisional application, is a new patent application which is separate and independent from the parent application, unless specific provisions in the European Patent Convention require something different.

Background

The possibility to file a divisional application is provided in many patent systems and is guaranteed by Article 4.G. of the Paris Convention for the Protection of Industrial Property of 1883, to which more than 170 countries are Contracting Parties.
Some basic characteristics of a divisional application are as follows:

Relation to the parent European patent application

A divisional application under the EPC is a new patent application which is separate and independent from the parent application, unless specific provisions in the European Patent Convention require something different.
A divisional application may, however, be filed "only in respect of subject-matter which does not extend beyond the content of the earlier application as filed." The practice relating to the filing of divisional applications under the EPC was clarified by the Enlarged Board of Appeal of the EPO in June 2007. The Board held that a divisional application which on filing contained subject-matter extending beyond the content of the earlier application as filed could be amended later to remove the deficiency, even at a time when the earlier application is no longer pending.

Time limit for filing a divisional application

The conditions for filing divisional applications regarding the time limit to be met have however been modified several times since the entry into force of the European Patent Convention in the 1970s, and changed again on 1 April 2010. What has not been changed however is that a divisional application can by no means be filed after grant of a European patent, i.e. based on a European patent. A divisional application can only be filed based on a pending European patent application, provided that the provisions of are met.

Situation prior to 1 April 2010

Prior to 1 April 2010, it was only required that the parent application be pending at the time the divisional application is filed. A divisional application of a European patent application could be filed for any pending application up to the day preceding the mention of grant of the European patent, but not including the date of grant.

Rules applicable between 1 April 2010 and 31 March 2014

As of 1 April 2010,
Rule 36 EPC has been amended to read as follows:
New Rule 36 introduced a time limit for voluntary division of the parent application, while Rule 36 provides a time limit for mandatory division of the parent application in case of a lack of unity under. "Mandatory" in that sense means that, to cover each of the non-unitary inventions, one or more divisional applications need to be filed. However, if the applicant decides not to seek patent protection for the non-unitary inventions, no divisional applications need to be filed.
In a decision dated 26 October 2010, the Administrative Council further specified, or clarified, that "the Examining Division's first communication" referred to in Rule 36 EPC had to be a communication under, and, or.

New rules since 1 April 2014

In October 2013, the Administrative Council of the European Patent Organisation again amended Rules 36, 38 and 135 of the Implementing Regulations, which define the time limits for filing divisional applications in Europe. The new rules apply to divisional applications filed on or after 1 April 2014. According to the new rules, the filing of divisional patent applications is again possible as long as the earlier patent application is pending.
An additional fee is however due "in the case of a divisional application filed in respect of any earlier application which is itself a divisional application". In other words, an additional fee for the filing of divisional applications of the second or any further generation was introduced. The amount of the additional fees was announced in December 2013. The purpose of the additional fee is "to discourage the filing of long sequences of divisional applications", so as to also discourage "the prolongation of pendency periods". The "use of divisional applications as a tool for prolonging the pendency of subject-matter before the EPO" has been regarded by the EPO as "detrimental to legal certainty for third parties as well as to patent office workloads".

Meaning of "pending earlier European application"

As mentioned above, a divisional application can only be filed based on a pending European patent application. Several Board of Appeal decisions have dealt with the meaning of a "pending earlier European application". This is indeed not defined in the EPC.
In Board of Appeal decision J 18/09, it was held that a divisional application cannot be validly filed based on a PCT application before entry into European regional phase, as later confirmed in Enlarged Board of Appeal decision G1/09. In other words, "a Euro-PCT-application not having entered the European phase is not a pending earlier European application in the sense of Rule 36 PCT". This contrasts with the situation in the United States, as laid out in the U.S. Manual of Patent Examining Procedure.
In decision G 1/09, the Enlarged Board of Appeal held that
In decision J 4/11, the Legal Board of Appeal held that

Further requirements regarding the filing of a divisional application

European divisional applications must be filed directly or by post with one of the filing offices of the EPO, i.e. at the European Patent Office at Munich, The Hague, or Berlin. It may also be filed using the so-called epoline online filing software.
The filing of a European divisional application with a national authority has no effect in law. The national authority may however, as a service, choose to forward the divisional application to the EPO. If the authority does so, the divisional application is deemed to be received at the time the documents are received at the EPO. The authority has, however, no obligation to do so.