Just three and a half years ago, the European Patent Office (EPO) changed its rules to limit the time period during which divisional applications could be filed. As explained in our March 2010 IP Bulletin, the rule change only allowed new divisional applications to be filed within 24 months of the first communication from the Examining Division issued in the family, absent a unity objection in a subsequent application. This change led to a rash of European divisional patent application filings prior to April 1, 2010. The EPO, however, has now reversed course. Last month the Administrative Council approved a rule change that permits divisional applications to be filed at the EPO based on any pending parent patent application, regardless of how long the application has been pending. Under this rule change, a divisional application could be filed up until the date that the application from which the divisional application is pending issues. While the details related to the changes have not yet been published, it is anticipated that there will be an additional fee to file a divisional application that claims priority to an earlier application that itself is a divisional application, in an effort to curb long sequences of divisional application filings. Importantly, the new rule will be retroactive for any pending application, even if the application was previously subject to the 24 month rule. Thus, applicants with applications pending at the EPO, particularly those having applications that are not currently eligible for further divisional applications, may want to consider delaying grant until after April 1, 2014, if feasible, to allow for the opportunity to file additional divisional applications. Stay tuned to the IP Bulletin for the particulars regarding the new EPO divisional rules.
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