IP Cases & Articles

Repeal of Two-Year Rule for Divisional Applications

It has been reported that on 16 October 2013 the EPO Administrative Council agreed to amend Rules 36 and 135 EPC, effectively ending the two-year rule for divisional applications. Amended Rules 36(1) and 135(2) EPC will revert to the previous system of allowing the filing of divisional applications as long as the earlier application is pending.

The envisaged date of entry into force of amended Rules 36(1) and 135(2) EPC is 1 April 2014. The amended rules would apply to divisional applications filed on or after that date.

We assume therefore that for any applications where Rule 36 currently prevents a divisional application being filed, then after 1 April 2014 it will become possible to file such a divisional – if the application is still pending. Therefore for any cases where this would be desirable but where grant or refusal is likely before April next year, then measures to delay prosecution (such as requesting extensions of time to respond) may be advisable.

In addition to the above amendments, in line with the original aims of the EPO to cut down on artificially prolonged prosecution through the use of divisionals, Rule 38 EPC is being amended to introduce a surcharge for filing divisionals of divisionals. Again this is expected to come into force on 1 April 2014.

We will provide more details and confirmation once the EPO make an official announcement.