A return to normality: file divisional patent cases when you are ready

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The day many patent attorneys have been hoping for since 2010 is nearly here: the day on which the European Patent Office allows divisional applications to be submitted based on any European patent application that is still pending, regardless of when it was examined, who sent the exam report, or any other date or number. A simple, straightforward rule that allows you to see what claims are being allowed by the EPO before being obliged to decide whether any further protection based on the original disclosure might be needed.

1 April 2014 is the date in question. As long as your patent application is still pending on that date (so it has not granted, has not been refused and has not been withdrawn) then the option for a divisional application re-opens, even if the deadline under the current rules has passed.

For many, this date will not trigger an immediate need for review or action. A significant number of patent applicants only really want to decide on whether a divisional genuinely is needed once they know for certain the scope of protection that the EPO is going to grant on the original (parent) case. Then a commercial decision can be taken to assess whether that is enough, or whether there might be something else disclosed in the text as filed that could be protected, or indeed whether it is worthwhile trying to pursue broader protection via a divisional.

However, there will be cases where it would be useful to consider the option of a divisional application sooner rather than later. For example, in the event that there is a product of current commercial interest that is not covered by the claims now being examined, there would be a benefit to getting a divisional application submitted promptly that does cover that product, so that we start to make headway with obtaining protection for that commercially relevant product.  Equally, if you are aware of a third party’s potentially infringing article in Europe, then filing a divisional that has claims directed to that article could be usefully progressed straight away. The claims could deliberately be relatively narrow and PACE acceleration can be requested, with the intention of getting a granted and enforceable patent quickly.  Indeed, even the existence of the pending divisional application with claims that clearly cover the article in question could prove the basis of a useful commercial resolution with the third party without need to resort to litigation.

Although the EPO has brought in new fees for divisional applications that are themselves filed out of a case which is a divisional, which apply from 1 April, in practice these actually provide little deterrent to progressing a divisional. In the context of the official fees that must be paid on a divisional (back-dated renewal fees, as well as the filing and search fee) an extra fee of 210 Euros for a second generation divisional is relatively small. Even the 840 Euro fee for a fifth or higher generation divisional is unlikely to deter a filing. This is especially the case given that there would only be a need to file a fifth generation divisional if each of the parent case and the first to third generation divisionals were already granted or refused, which would indicate that the patent family had been alive for some time and therefore cost of the back-annuities would be, by far, the largest expense.

When it comes to the practice that the EPO disliked, and tried to outlaw with its previous rules, of divisionals being filed with apparently the sole aim of keeping an application pending and therefore keeping options open for the applicant, it seems that perhaps the largest deterrent would actually be for the EPO to examine applications more swiftly.  Whether that happens, of course, remains to be seen.

In the meantime, as the return of flexible divisional strategies is on the horizon, we are always happy to review what is covered by the current claims of pending patent applications and whether a divisional application might be a helpful strategy to ensure particular subject matter is protected.