The EPO has amended Rules 36, 38 and 135 EPC which deal with the requirements for filing divisional patent applications.  This will enter into force on 1st April 2014 and will apply to divisional applications filed on or after that date.

The strict two year time limit for filing divisional applications has been repealed; see our news article of 25th October 2013 regarding the change to Rule 36 EPC.  In this respect, from 1st April 2014, the only requirement for filing a divisional application will be that the application to be divided must still be pending.

Additional fee may be payable on top of normal fees

In addition, there will be an additional fee on top of the normal fees which need to be paid when filing a second or more divisional patent application. This means that the additional fee will be payable in the case of divisional applications filed in respect of any earlier application which is itself a divisional application (Rule 38(4) EPC).

The official additional fees for filing a European divisional application are as follows:

Second generation                            210 Euros

Third generation                                420 Euros

Fourth generation                              630 Euros

Fifth or subsequent generation          840 Euros

The two year time limit was originally introduced to limit the number of divisional filings. Divisional applications have been used in order to prolong the pendency of subject inventions before the EPO, thus creating uncertainty for affected third parties.  However, in practice this actually resulted in an increase in the number of divisional filings, because applicants were forced to file a divisional before the outcome of the parent application was clear.  By removing this time limit, it is hoped that the number of precautionary filings will decrease.

Now that the two year time limit has been repealed, and in order to now act as a deterrent to the filing of divisional applications for the purpose of prolonging the pendency of the subject matter of an application before the EPO, the EPO has introduced the aforementioned additional fees. The fee does not apply to the first filed generation divisional, but only to second or more generation divisional filings and this fee increases with each subsequent divisional filing.  Also, it is believed that the EPO will endeavour to speed up the examination of divisional applications in order that their patentability can be determined in a more timely manner.

Consider filing a second or more generation divisional application prior to 1 April 2014

If you are currently considering filing a second or more generation divisional application, you may wish to consider filing this prior to 1st April 2014 in order to avoid this additional fee together with the normal EPO biennial increase of their official fees, which will also come into force on 1st April 2014.

If you need any kind of patent advice contact our expert patent team.