European divisional applications: yet another change

Following a recent notice from the European Patent Office (EPO), some applicants may be permitted to file divisional applications later than had previously been thought. In this regard, for some applications a two year divisional time limit that was thought to have passed may in fact still be running, as far as the EPO is concerned, or may even have not commenced at all. However, a degree of caution should be exercised due to the fact that the European patent rules themselves have not been changed; there is simply a change in the practice of the EPO’s receiving section in terms of when it will view a divisional as validly filed.

Stricter rules on when divisional applications could be filed at the EPO came into effect on 1 April 2010, meaning that for most cases the divisional deadline was two years from the first communication from the examining division, rather than divisionals being permitted at any time when the parent application was still pending. Following this change, however, it was realised that the rules did not specify what type of communication triggered the two year deadline, and therefore this had the unwanted effect that communications such as the Rule 161 communication inviting voluntary amendments could start the divisional term if they were issued from the examining division. An amendment of the rules was therefore passed to clarify that the triggering communication was the first Article 94(3) communication – i.e. the first examination report – or the Rule 71(3) communication, inviting completion of the grant procedure, in the event that an application progressed directly to that stage without an Article 94(3) communication issuing.

The EPO’s new notice follows a Board of Appeal decision J 9/10, which did not relate to divisional applications but considered the nature of Article 94(3) communications in the context of when an applicant could receive an examination fee refund following withdrawal of an application. The decision found that although an Article 94(3) communication had issued on the application before it was withdrawn, this was not shown to have been authenticated by the appointed primary examiner before it was dispatched by the formalities officer. Therefore it was concluded that examination had not commenced for the purposes of the rule that permits an applicant to receive a partial refund of the examination fee if the application is withdrawn before examination. The communication in question was issued on Form 2001A, which is essentially a one-page exam report of the type that was sent out by the EPO between 2005 and 2012, in situations where the applicant had not responded to a negative search opinion drawn up before 1 April 2010, with the communication simply inviting the applicant to address the deficiencies set out in that negative search opinion. In contrast, most Article 94(3) communications are issued on Form 2001, with an accompanying Annex setting out the examiner’s comments.

Despite the Board of Appeal decision J 9/10 making no reference to divisional applications, nor indeed making any wider commentary on whether any aspect of EPO practice should change, the EPO has now issued its new notice regarding divisional applications in the official journal. Essentially, the EPO has declared that in view of the reasoning in J 9/10, any Article 94(3) communication issued on Form 2001A will not be viewed by the receiving section as starting the two year divisional deadline. In this regard, the EPO has decided that: “Decision J 9/10 of 18 April 2012… cast doubt on the validity of a communication of the examining division issued automatically on EPO Form 2001A”; therefore a change of practice is being implemented in order to “…ensure that this decision does not give rise to legal uncertainty among applicants and the public…”  

It is therefore clear that, as far as the EPO’s receiving section is concerned, a divisional application will now be viewed as validly filed if it is submitted within two years of the first Article 94(3) communication issued on Form 2001, even if there was an earlier Article 94(3) communication issued on Form 2001A, provided of course that the parent application is still pending when the divisional application is filed.

Equally, for a case that goes directly to the issuance of a Rule 71(3) communication after reply to an Article 94(3) communication issued on Form 2001A, the divisional deadline will be deemed to be two years from the Rule 71(3) communication (although again the parent application must still be pending when the divisional is filed – and therefore in practice the day before grant will be the real deadline).

Given the considerable delays in examination at the EPO, this change in practice could potentially allow applicants to file divisional applications many years later than what was previously viewed as the final divisional deadline.  Therefore there may be cases where this change in practice is highly advantageous to the applicant, allowing him to seek protection for further aspects of the invention as disclosed in the original application which perhaps have only recently been identified as being of commercial value, or perhaps to seek protection for broader claims if the applicant is now in a better position to support those claims.

However, due consideration should be given before taking advantage of this extra time to file a divisional application, due to the fact that there has not been a change in the European Patent Convention or its rules. This means that the change is one of the receiving section’s practice, and there is no guarantee that the divisional would be viewed as validly filed if there was a third party challenge at a later stage, especially when considering a post-grant challenge before national courts, which could choose to focus on a literal interpretation of the rule on when divisionals can be filed.

In this regard, it is to be noted that Rule 36 EPC refers to a deadline of “twenty-four months from the examining division’s first communication under Article 94, paragraph 3…” It does not refer to the communication being one that has been authenticated by the primary examiner. Therefore an argument could be made that as an Article 94(3) communication issued on Form 2001A is a communication that is headed as being a communication under Article 94(3) and furthermore is stamped as being from the examining division, it does start the two year divisional deadline.

This is not to say that applicants should not think seriously about taking advantage of the EPO’s change in practice, especially given the relatively small percentage of European patents that are challenged post-grant, but it does mean that consideration should be given as to the risk of a third party challenge before any budget is spent on filing such a divisional application and progressing it to grant.

This is going to be an issue that very much requires thought on a case-by-case basis and your usual Barker Brettell patent attorney will be happy to provide any advice that you might require.

Ultimately, this notice will only affect a small number of European patent applications, because it will only impact cases where there was an Article 94(3) communication issued on Form 2001A and where either the next communication has not issued yet or where the next communication issued less than two years ago and the application remains pending. Nonetheless, we are presently reviewing all pending European cases for which we are responsible and if any of your cases are potentially impacted then you will be contacted to alert you to this fact, so that consideration can be given to those cases in relation to possible  divisional filings.