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Monday, 30 November 2009

New Draft EPO Guidelines


The EPO have just released a draft version of the Guidelines for Examination, to be implemented from 1 April 2010. This is when the Administrative Council decisions CA/D 2/09 and 3/09 come into force, making changes to the EPC that will change the way applicants have to deal with unity of invention and the final dates for filing divisional applications.


The IPKat has not yet had chance to read through all 594 pages of the Guidelines, but noticed in flicking through them the following new passages that may be of interest to his readers. This is an example of how the EPO sees the new rules on divisionals working in practice:
"1.1.1.4 Second- and subsequent-generation divisional applications
Voluntary division (Rule 36(1)(a))
For the filing of second-generation divisional applications (i.e. divisional applications based on an earlier application which is itself also a divisional), the event which starts the period for voluntary division is the first communication in respect of the earliest application for which a communication has been issued. This is determined as illustrated by the following example:
Example 1
- EP1 is the original European application,
- EP2 is a divisional application based on EP1 and
- EP3 is a divisional application based on EP2.
Where a first communication (see IV, 1.1.1.2) has already been issued for EP1 when EP3 is filed (this is the usual situation), the period for voluntary division of EP2 (by the filing of EP3) is calculated from the date of notification of this first communication in respect of EP1.
However, all that is required is that EP2 is still pending when EP3 is filed; EP1 does not need to be pending. This is because EP1 is the earliest application in respect of which a first communication has been issued (used to calculate the period for voluntary division), but it is not the earlier application which has been divided (this is EP2), and it is the earlier application (EP2) which must be pending according to
Rule 36(1).
If no first communication has been issued for either EP1 or EP2 when EP3 is filed, the divisional is filed in time according to Rule 36(1), provided that EP2 is still pending.
Voluntary division in branched families of divisional applications
In cases where there are two divisional applications each derived from the same earlier (parent) application, the periods for voluntary division of the two divisional applications are calculated independently:
Example 2
- EP1 is the original European application,
- EP2a is a divisional application based on EP1 and
- EP2b is a divisional application based on EP1.
In example 2, the period for voluntary division of EP2a is calculated with reference to the appropriate communication issued in respect of EP1 or EP2a (as indicated under example 1 above) but not EP2b.
Likewise, the period for voluntary division of EP2b is calculated with reference to the appropriate communication issued in respect of EP1 or EP2b but not EP2a. These cases are treated in the same way as example 1 above, but ignoring any divisional applications which are not in a direct line from the divisional being filed to the earliest application.
Mandatory division (Rule 36(1)(b))
In example 1, the period for mandatory division of EP2 (by filing EP3) is calculated from the first communication in examination raising a specific objection of lack of unity for the first time in respect of EP2 (EP2 being the immediate parent application - see IV, 1.1.1.3)."
The IPKat thanks the EPO for making the new rules so clear and easy to follow. He is now sure that there will be no problems at all come 1 October 2010.

Tufty wonders how the EPO will be forcing applicants to file those divisionals that the EPO considers to be mandatory. Aren't all divisional applications voluntary?

More long division here. More legal obfuscation here.

3 comments:

Anonymous said...

Can anyone clarify the situation where a divisional application is filed very early, before issue of a first Examination Report in the parent case: What happens if a first Examination Report issues in relation to that divisional application before the parent case has been examined? According to my understanding, the deadline to file a divisional from the divisional runs from the parent case - is this correct? Hopefully that makes sense!

Derk Visser said...

There are two interpretations of ‘earliest application’ in the new R. 36(1): ‘the first application in a series of predecessor applications for which a communication under Art. 94(3) has been despatched’ and ‘the first application of a series of predecessor applications’.
An example to show the consequence of the different interpretations:
- EP1 original application, first Art. 94(3) communication despatched on 1-6-2009;
- EP2 divisional application, first communication despatched on 1-12-2008;
- EP3 divisional of EP2.
This situation can easily occur when the first application is a Euro-PCT application, which has a low priority in the EPO. According to the first interpretation EP2 is the earliest application, i.e. the first application for which a communication has been despatched; hence, the divisional EP3 must be filed at the latest on 1-12-2008 + 24 months = 1-12-2010. According to the second interpretation, EP1 is the earliest application and the divisional must be filed at the latest on 1-6-2009 + 24 months = 1-6-2011. Hence, the interpretation determines the final date for filing a divisional.
Most publications on the new R. 36 of patent firms use the latter interpretation. However, I think the first interpretation is the correct one, based on the following grounds.

1 In my view the text of the new provision does not allow another interpretation.

2 In the first interpretation the provision has no obvious holes, in the second interpretation it is leaky.
If you apply the interpretation ‘the first application of a series of predecessor applications’, the 24-month time limit for filing a divisional can easily be avoided: withdraw the first application of the series before the EPO has issued an Art. 94(3) communication, and the 24-month period will never start to run. An example is where an invention in a first application has been searched and the applicant decides that he does not want to continue the prosecution of this invention and wants to protect another disclosed invention by means of a divisional; he will file the divisional and withdraw the first application before the start of the substantive examination.
I presume that the EPO knows this hole and wanted to close it by the present wording of R.36(1)(a). However, the EPO provides an explanation of the rule pointing in the opposite direction (http://archive.epo.org/epo/pubs/oj009/10_09/10_4819.pdf):
'In the case of a sequence of European divisional applications, the 24-month time limit is to be calculated from the date on which the examining division's first communication was issued for the earliest application in the sequence, e.g. the grandparent application.'

3 The new Guidelines appear to support the first interpretation rather than the second one.
The draft version of the Guidelines (http://www.epo.org/patents/law/legal-texts/guidelines-2010.html) gives the following example on page A-IV,6:
'Example 2
- EP1 is the original European application,
- EP2a is a divisional application based on EP1 and
- EP2b is a divisional application based on EP1.
In example 2, the period for voluntary division of EP2a is calculated with reference to the appropriate communication issued in respect of EP1 or EP2a (as indicated under example 1 above) but not EP2b. Likewise, the period for voluntary division of EP2b is calculated with reference to the appropriate communication issued in respect of EP1 or EP2b but not EP2a. These cases are treated in the same way as example 1 above, but ignoring any divisional applications which are not in a direct line from the divisional being filed to the earliest application.’
The first interpretation is supported by 'or EP2a' and 'or EP2b'. A similar support is given in Example 1.

I must admit that the explanations of the EPO on this issue are unsatisfactory.

tom said...

@ Derk

I think there is in fact another possible interpretation, which also avoids the "leaky" issue. Rule 36(1) says "earliest application for which a communication has been issued", so a) take all applications for which a communication has issued, and b) take the date of the first communication from whichever of those applications was filed first. This would give a deadline of 1/6/09 + 24 months in your example, as EP1 is the earliest application in the series (and a communication has issued for it), but avoids the problem of withdrawing the first application before a communication is issued on it (as it is never an application for which a communication has been issued, so is not involved in calculating the deadline). It also fits with EPOs examples in the Guidelines.

The drawback with this interpretation is that if the EPO issued a first communication on a divisional, then more than two years later issued a first communication on an earlier application in the series, there would be a period in which divs can't be filed, and then suddenly can again; I suppose the EPO might claim that they would never do such a thing ...

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