Patent News 8

EPO Tightens Noose on Divisionals

Patent News 8 - you get the feeling that the major patent offices are all trying to tighten the noose around continuation practice around the world.

The administrative council of the European Patent office (EPO) on March 26th 2009 voted to amend Rule 36 of the EPC. Rule 26 governs the practice of divisional patents.

Beginning in April of 2010 there will be a two year time limit for filing divisional applications. The two year period begins either from the date of the first communication from an examiner or the date on which an objection is made on lack of unity.

For background - here is Rule 36 of the European Patent Convention:

Rule 36

European Divisional Applications

(1) The applicant may file a divisional application relating to any pending earlier European patent application.

(2) A divisional application shall be in the language of the proceedings for the earlier application and shall be filed with the European Patent Office in Munich, The Hague or Berlin.

(3) The filing fee and search fee shall be paid within one month of filing the divisional application. If the filing fee or search fee is not paid in due time, the application shall be deemed to be withdrawn.

(4) The designation fees shall be paid within six months of the date on which the European Patent Bulletin mentions the publication of the European search report drawn up in respect of the divisional application. Rule 39, paragraphs 2 and 3, shall apply.

And related to that is Article 4G of the Paris Convention:

Paris Convention Article 4G:

(1) If the examination reveals that an application for a patent contains more than one invention, the applicant may divide the application into a certain number of divisional applications and preserve as the date of each the date of the initial application and the benefit of the right of priority, if any.

(2) The applicant may also, on his own initiative, divide a patent application and preserve as the date of each divisional application the date of the initial application and the benefit of the right of priority, if any. Each country of the Union shall have the right to determine the conditions under which such division shall be authorized.

There is now a distinct possibility that you will see many applicants filing divisionals automatically as the 24 months approaches.


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