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Has the EPO Reopened the Divisional Window?

The European Patent Office (EPO) recently issued a practice notice which could cause the window for filing divisional applications to be extended or reopened for some pending European patent (EP) applications. You may now be able to obtain European patent rights through a divisional application that were not possible before this change.

When can I file a divisional application?

A divisional application can be filed if (a) its parent application is still pending, and (b) the divisional period has not yet expired.

In most cases, the divisional period expires 2 years after the date of notification of the examining division's first communication for the parent application. To illustrate this, here is an example showing the typical progress of a European patent application:

  • The EPO prepare a search report listing documents found in the search, together with a 'search opinion' giving an initial opinion on patentability.
  • If the search opinion contains objections, then the applicant has to respond to the search report with arguments and/or amendments for responding to the objections.
  • If the search opinion contains no objections, or the response to the search report has addressed all the objections, then a 'Rule 71(3) communication' can be issued stating that the application is ready for grant.
  • If the Examiner still has objections, then the Examiner issues an 'Article 94(3) communication' explaining why the application cannot be granted yet.
  • The divisional period is triggered by notification of the first Rule 71(3) or Article 94(3) communication, but not the search opinion.

What has changed?

Responding to the search opinion only became compulsory in 2010. Under previous rules, if the applicant did not respond to the search opinion, then the EPO would issue a very brief Article 94(3) communication (called a 'form 2001A'), which referred to the search opinion and invited the applicant to respond within a specified time period.

The EPO previously considered the form 2001A to trigger the divisional period. However, the EPO's Legal Board of Appeal recently decided that, as the form 2001A was typically generated by a formalities officer without any examiner being involved, it was not an act of the examining division and so substantive communication had not yet begun. In the case at issue (J9/10), this was relevant to whether a refund of part of the examination fee was allowed when an application was withdrawn after receiving the form 2001A.

The Board did not say anything about divisional applications. However, the Board stated that the form 2001A was not a valid Article 94(3) communication, because it was not issued from the examining division.

To avoid uncertainty, the EPO has now announced that a form 2001A will not be considered to trigger the 2-year divisional period. The EPO will now treat the divisional period as expiring 2 years from the notification of the first Rule 71(3) or Article 94(3) Communication, excluding any form 2001A.

How does this affect my EP application?

We would not recommend relying on the new practice as a matter of course. The EPO's opinion on the law is persuasive, but not ultimately decisive, so a Board of Appeal could later overrule the EPO's practice notice. The safest strategy would be to file any divisional application according to the old practice, within two years of notification of any Rule 71(3) or Article 94(3) Communication, including a form 2001A.

However, this may not always be possible. Sometimes, the need for a divisional application may only arise later on. In this case, the new practice may be useful as it can extend or reopen the window for filing divisional applications.

You should check whether you have any European patent applications for which:

  • a form 2001A was notified more than two years ago; and
  • the first Rule 71(3) or Article 94(3) Communication (excluding the form 2001A) was notified less than 2 years ago, or has not yet been received.
  • For such cases, the EPO will still accept divisional applications and so you may be able to obtain patent rights which were not possible previously.

The European Patent Register entry for each patent application includes the date of the communication that triggers the divisional period. As this information was based on the old practice, it may now be incorrect. It is unclear whether the EPO will correct this information.

If in doubt, it is best to ask your patent attorney to check whether you can still file a divisional application.

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