European Patent Notes on Divisional Applications

European Patent Update from Gwilym Roberts

 EP divisional practice – Back to the Past

Attorneys will be aware that the European Patent Office announced a few months ago that it is reverting to its practice predating the controversial law change in 2010. That change, which effectively put in place a two year window on divisional application filings, and was almost universally unpopular, disappears as of 1st April 2014. From that date it will be possible to file divisional patent applications from any pending European patent application whether or not the two year window has closed. The EPO has now announced the final piece of information, namely the costs to be applied. In particular, to reduce the perceived risk of abuse of the system by users filing multiple generations of divisionals, the EPO has confirmed a fee regime where surcharges going up in €210 steps are applied for second and successive generations. In other words, if a first divisional is filed and then another application is filed as a divisional of it, a €210 surcharge will be applied to the first, €420 for the grandchild and so on.

Take Homes

From 1st April 2014 you will be able to file divisionals from any pending European patent application. That means that if you have a case which is near grant and you can get extensions on deadlines you should if a divisional is wanted. This applies equally to cases where the previous two year window had already closed. Although surcharges are now being applied for second and subsequent generation divisionals, they are not high and are likely to be inconsequential against the back renewal fees due on divisionals anyway.

Any queries please contact groberts@kilburn&strode.com.

2 thoughts on “European Patent Notes on Divisional Applications

  1. I think I might have asked this before but I don’t recall the answer: in response to this rule, who filed the most divisionals off a single case, and how many divs were filed?

    1. link to ipkitten.blogspot.de…6 here is a link to a 28 comment thread on this subject. Towards the end I mention the Medinol case, in which the patent owner filed a succession of divisionals at the EPO. If memory serves, it went to the 5th generation. It is my hunch that it was cases like this which provoked the EPO into introducing its short-lived and ill-fated 24 month cap on the period available for filing any and all divisionals.But the record number of divisionals off of a single EPO filing? I have no idea. Sorry.

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