Reported by Dr. Rudolf Teschemacher
1. With effect from April 1, 2010, the Implementing Regulations to the EPC were amended in the framework of the EPO’s “raising the bar” initiative, restricting the filing of divisional applications to narrow time limits, a requirement unknown in any other modern patent system. Representatives of the interested circles raised strong objections in the legislative process which turned out to be in vain. The implementation of the new system showed that the objections made were fully justified and that establishing a reliable system for monitoring these time limits was hardly possible (see Wegner/Teschemacher in epi Information 2/2010, 53). In reaction to such complaints, the EPO took certain administrative measures including the indication of the first examination report triggering the time limit for voluntary division (OJ EPO 2011, 273). Apart from the fact that these measures turned out not to be reliable, they did not touch the fundamental problem of the new system, i.e. the need for the applicant to make a decision on the filing of a divisional application before having a sound basis for such a decision because he does not yet know the result of the proceedings in the parent application.
2. The continuing complaints of the users prompted the EPO to assess the impact and effectiveness of the time limits. It turned out that they resulted in a wave of more than 20.000 divisional applications in the year following the entry in force of the amendment. Even in the steady state, the number of divisional applications increased due to the precautionary filing of divisionals. In March 2013, a user consultation was started which had the foreseeable result that the users favoured the reinstatement of the previous Rule 36 EPC and the EPO made a corresponding proposal which was discussed in September 2013 in the Patent Law Committee of the Administrative Council and adopted by the Council on October 16, 2013.
3. Rule 36 (1) EPC as amended reads as Rule 36 (1) EPC in the version applicable before April 1, 2010:
The applicant may file a divisional application relating to any pending earlier European patent application.
The amendment will enter into force on April 1, 2014 and will be applicable to divisional applications filed on or after that date.
4. In accordance with the Guidelines for Examination, the following principles apply in respect of the pendency of an application:
5. One of the aims of the introduction of the time limits in 2010 was to prevent a misuse of divisional applications by filing endless sequences of divisional applications keeping the subject-matter pending although examination in preceding applications had negative results. In order to impede such misuse, a new paragraph 4 of Rule 38 EPC provides for a fee for a divisional application filed in respect of a parent application which is itself a divisional application (divisional of the second generation). It is foreseen that the respective fee will be progressive for each further generation of a divisional application. However, the amounts foreseen are not deterring compared to the renewal fees which have to be paid for such applications in accordance with Rule 51 (3) EPC.
6. The amendments have the following practical consequences: