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NEWSFLASH® EPO New Rules on Divisional Applications

© 2009 - VOSSIUS & PARTNER

Topics
I. II. III. IV. V. VI. Divisional Applications – General Requirements Divisional Applications – New Rules – Voluntary Divisionals – Mandatory Divisionals – Legal Consequences – Transitional Provisions

VII. Further EPC Changes
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I Divisional Applications: GeneralRequirements

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Divisionals: General Requirements
Article 76 - European divisional applications
(1) A European divisional application shall be filed directly with the European Patent Office … It may be filed only in respect of subject-matter which does not extend beyond the content of the earlier application as filed; in so far as this requirement is complied with, thedivisional application shall be deemed to have been filed on the date of filing of the earlier application and shall enjoy any right of priority.
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Divisionals: General Requirements
• part of the subject-matter of an application can be pursued in one or more divisional applications • a divisional application can serve as the basis of a further divisional application •the priority date/filing date of the divisional application is that of the parent application • all fees, including renewal fees, which were due in the parent application, have to be paid upon filing the divisional application (→ high costs)

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Divisionals: General Requirements
Rule 36 - European divisional applications
(1) The applicant may file a divisionalapplication relating to any pending earlier European patent application.

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Divisionals: General Requirements
“pending”: • if parent is granted: up to 1 day before grant is published • if the parent might be rejected in oral proc., the divisional should be filed prior to oral proceedings • the divisional cannot be filed during the appeal period if an appeal is not filed (G1/09) • until parent application is withdrawn, deemed to be withdrawn or refused
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Divisionals: General Requirements
Enlarged Board of Appeal decision G1/06: Grandfather - Father (1st div.) - Child (2nd div.) The subject matter of the child divisional must be disclosed in both grandfather and father applications
Grandparent 1st Divisional Parent 2nd DivisionalChild

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Divisionals: General Requirements
• the subject matter of a divisional can not extend beyond that of the parent (and grandparent) application as filed • subject matter which was explicitly abandoned in the parent application cannot be made the subject matter of a divisional

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Divisionals: General Requirements
• onlythose contracting states can be designated in the divisional which have been validly designated in the parent application • same language as parent (language of proceedings or language of parent as filed + 2 months for translation)

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II New Rules on Divisionals

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Divisionals: New Rules
• the application to be divided (the "parent"application on which the divisional is based) must be pending, and • at least one of the two periods mentioned below must not yet have expired: (a) the period for voluntary division under Rule 36(1)(a) EPC or (b) the period for mandatory division under Rule 36(1)(b) EPC, where applicable.
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III Voluntary Divisions

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Voluntary Divisionals:New Rule 36 (1) EPC “(1) The applicant may file a divisional application relating to any pending earlier European patent application, provided that: …”
Note: "earlier application" = immediate parent "earlier application" ≠/= "earliest application"

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Voluntary Divisional
New Rule 36 (1)(a) EPC
“(a) the divisional application is filed before the expiry of a time...
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