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Friday, 18 October 2013

BREAKING NEWS - EPO set to restore sanity to divisional applications

... but who has a fetish 
for Rule 36?
The IPKat has heard from a number of sources, and seen in writing on JA Kemp website here, that the European Patent Office is to abolish the hated Rule 36 that came into force in 2010, which sets a 2 year deadline from the first office action to file a divisional application.  The Rule will apparently be amended to specify only that the application to be divided must be pending.  This is what many had requested in the recent consultation that the EPO undertook on this matter (reported by the IPKat here).  Hopefully the law will go back roughly to the previous position.  Thanks and congratulations to all who responded to the consultation.

The unexpected but not unforeseeable consequence of the 2-year limit rule was that the number of divisionals actually increased, as applicants were forced to make a decision when they did not know how the prosecution of the parent was going.  The IPKat is delighted, nay ecstatic, that this horrid little piece of legislation will be repealed.

If anyone sees news of an official announcement from the EPO on this matter, please post a comment below.  The IPKat and his readers will be grateful and Katpats will be forthcoming.

UPDATE:  Katpats to so many people, including the respondents below and the several email responses received,  for providing the various contributions from HGF, Marks & Clerk, and EP&C, and for finally providing the EPO web announcement, to which I shall give the last word.

The Administrative Council has adopted in its meeting of October an amendment of the provisions of the European Patent Convention dealing with the requirements for the filing of divisional applications, namely Rules 36, 38, and 135.
The decision enters into force on 1. April 2014 and will apply to divisional applications filed on or after that date. It enables the filing of divisional applications as long as the earlier (parent) application is pending. The 24-month time limits for the filing of divisional applications are repealed.
In addition, there will be an additional fee as part of the filing fee for divisional applications of second or subsequent generation. This means that the filing of divisional applications in respect of earlier divisional applications will be subject to an additional fee. The amounts of this fee grow progressively with each subsequent generation of divisional applications up to a certain level, becoming then a flat fee.


Stephen Garner said...

I understand that the amended rules will allow the EPO to levy an additional fee on divisionals of divisionals. This is, presumably, intended to discourage applicants from filing long chains of "abusive" divisionals.

Anonymous said...

I'm afraid that this isn't really ynews it's been rumoured for at least a year that this was going to happer, probalby next April

Anonymous said...

The proposed (and accepted) text is as follows:

1. Rule 36(1) shall read as follows:
"(1) The applicant may file a divisional application relating to any pending earlier European
patent application."
2. The following paragraph 4 shall be added to Rule 38:
"(4) The Rules relating to Fees may provide for an additional fee as part of the filing fee in
the case of a divisional application filed in respect of any earlier application which is itself a
divisional application."

Anonymous said...

Entry into force will be the 1 April 2014

Anonymous said...

A bit more info here...

Anonymous said...

HGF reports that an additional filing fee will be charged for second generation and further generation divisionals, but gives no hint as to how much the grandchild fee is likely to bee.

MaxDrei said...

Why did the AC ever introduce the foolish 24 month cap in the first place? Can anybody offer an alternative to my suspicion, that it was political pressure from the USA, the saame pressure that made the USPTO re-write its own Rules of Procedure to curb abuses that keep "something pending" throughout the 20 year term of the paterfamilias patent.

But what happened then? Dr Tafas got the new USPTO Rules overturned in court, so they never came in to force. The EPO ones did though!

The AC thewn came painfully to the realisation that it had been duped. Any "abuse" by Applicants at the EPO pales into insignificance compared with the ever ongoing abuse at the USPTO.

So the AC followed suit, to sweep away its own supposedly abuse-curbing Rule 36 text. Lesson? More haste, less speed?

Anonymous said...

Well this is news, Anon @ 11:17, because it has actually been decided rather than merely rumoured.

Kind of impressive how quickly the news has disseminated too.

Estelle Senior HGF said...

HGF received confirmation of the Rule change yesterday directly from the European Patent Office (EPO) Patent Law Directorate. They confirmed that the Rule that sets the deadline for filing divisional applications is to be changed as follows:

"In accordance with the new version of the provision, which will enter into force on 1 April 2014, a divisional application may be filed as long as the earlier application is still pending.

In addition, Rule 38 EPC was amended to provide a legal basis for the establishment of an additional fee in the case of divisional applications filed in respect to an earlier application, which is itself a divisional application. i.e. for divisional applications of the second or subsequent generation.

The new Rules will apply to divisional applications filed on or after 1 April 2014."

Anonymous said...

Once again I am amazed at how little sense MaxDrei makes.

Anonymous said...

EPO press release:

Hanna said...

In response to MaxDrei, I think the divisional deadline issue is a little bit of a sensitive point here in the UK. The person responsible was a past, female EPO president that may have come from here. She used it to try to clear the backlog of patent cases. A matter she was very concerned about. Here the UK IPO imposes an acceptance deadline on a patent application, and the same deadline applies to all divisionals, which is where she may have got the idea from. I'll also say for the record, I agree with her intentions, and I think some sort of deadline does need to apply, but it could only work if the EPO got other things right and were a bit more sane about unity.

MaxDrei said...

Thanks for that wry reply, Hanna. To be frank, I am a bit sceptical, that the former President supposed that the 24 month cap would reduce the backlog. I believe she was not so naive as to suppose that. Conversely, I do think she wanted to impress on the movers and shakers that the Office has as much duty to those in industry who are watching the patents of their competitors as those who are assiduously accumulating their own piles of patents.

Why do you think there needs to be a time cap? Is it the issue of legal certainty, when you write your client a freedom to operate opinion? Does that reason stand up to scrutiny though? I think not.

Or do you have another reason? If so, pray tell.

Roufousse T. Fairfly said...


My feelings about these news are paradoxical.

The repeal of that awful two-year limit is an excellent thing.

But I hardly feel that a near complete return to the status quo ante represents "sanity".

One observation before I develop :

If you have received a communication about intention to grant a European patent (Form 2004 EPO) dated 2.10.2013 or later, you should probably be able to file a divisional under the restored regime.

My rationale is as follows (neglecting Saturdays and Sundays):

a) 10 day rule for deeming Form 2004 to have been received: 2.10+10->12.10

b) 4 month time limit under R. 71(3) for paying fees and filing translations: 12.10+4 months ->12.2.2014

c) After that, the EPO usually takes 3 weeks (or more) to send out a form 2006A, which announces the decision according to Art. 97(1). This means that in our case the form could go out as early as 5.3.2014.

d) The date indicated on Form 2006 for the mention in the EP Bulletin of the grant is usually 4 weeks after the mailing date. The EPB is published on Wednesdays. 5.3.2014+4 weeks->2.4.2014.

e) A divisional could then only be filed on 1.4.2014 exactly, the very day new Rule 36 is introduced, as the parent application is no longer pending on the day the grant is mentioned. This is very tight.

The three weeks mentioned under (d), and the four weeks mentioned under (e) are not legal delays, but typical processing delays the EPO strives to make as short as possible. They are usually a bit longer, but there is nothing in theory that would prevent them to be shorter.

I hope I didn't forget anything. Don't take this as legal advice.

Forms 2004 issued as of now are most probably in the clear for allowing the filing of divisionals after 1.4.2014. But the closer to 2.10.2013 these were issued, the chancier things get.

There are also tens of thousands of applications with currently open older invitations under Rule 71(3).

If their applicants want to file a divisional (and there certainly will be many), they will have to get Rules 71(5) and/or (6) to kick in, by either filing clearly unacceptable amendments (and later withdraw them), or more not pay the required fees and request further processing when the Rule 112 communication comes. It will cost a bit of money.

If you've already filed the translations and paid the fees, now's the time to become creative to prevent the decision under Art. 97(1) to issue prematurely.

I don't think one should count on the EPO accepting any request for postponement, or expect them to quietly postpone the issuance of Forms 2006A, considering what happened at the introduction of the London agreement. Those in power probably considered that the national renewal fees took precedence to saving money for the applicants, and the grants couldn't wait...


David Brophy said...

@Roufousse: I wouldn't count on the standard delays of at least 3 weeks to issuance of Form 2006 plus 4 weeks to date of mention of grant.

I filed claim translations on 1 October and have just been given a date of grant of 13 November. That's 6 weeks and one day from 71(3) response to grant. (Specifically 16 days to issuance of the 2006 form, and then one day shy of 4 weeks from the 2006 to grant.)

Your suggestions of further processing or filing amendments are much more dependable ways of making sure the application is pending if the timings are in any way marginal.

Roufousse T. Fairfly said...

David, thanks for the counterexample. QED!

And I thought I had been conservative in my estimations!

This is a further hint of the priority set by the AC for grants. The tinkering with Rule 71 EPC2K and 51 EPC1973 over the years also had the same general objective. Any time saved at that point increases the probability that a renewal fee will be paid to a NPO instead of the EPO (cf. Art. 86 EPC).

Incoming documents trigger the issuance of "messages" which are queued for processing by FOs. Fee related documents are flagged and sent to the accounting department (that "zur Kasse" stamp you may notice from time to time). The FO receives the message, performs the verifications defined in his procedural guide, assembles the final document, and issues form 2006. Since the three day rule for forwarding the document from the FO to the mail room should also apply here (unless...), the whole process occured in about 10 calendar days. That ain't bad.

The 4 weeks I mentioned under my point (d) for the EP Bulletin publication is AFAIK calculated automatically by the IT system when the FO generates form 2006. Another department then takes over, and handles the transmission of the completed DREX (Druckexemplar) to an external contractor (e.g. Jouve) for setting the B1 document. Considering that a Druckexemplar can potentially contain a lot of scribbling and hard to read annotations, I find them quite good at their job. I wonder whether they could get started even before the Art. 97(1) decision is issued, and how much of the preparations for the A publication can be reused.

At that point, there is no involvement of the examining division whatsoever, even though the decision in issued in its name.

Upon reflection, the "cleanest" way to stall the grant procedure to make it after 1.4.2014 would be to withhold at least one translation.

Filing amendments could spare you the further processing fee, but it would certainly cost more than 240 EUR to draft them, and there is always a risk that they could go through on a fluke. Furthermore, the division will be involved again, and these are the folks who will also examine your upcoming divisional. If you file amendments and later withdraw them, they might get a bad impression, or might even have second thoughts about the one they were initially about to grant.

My calculation above omitted to state that they're based on the assumption that you also wait until the very last day for completing the steps under Rule 71(3). Otherwise the chance you'll miss the boat is even greater.

My conclusion is: one should look closely at any proposed grant pending or received just now.

Anonymous said...

RTF and friends,

Great detail - much appreciated.

Anonymous said...

Anyone who's had a 17-year application divided once again at the EPO, claims repeatedly tailored for provisional protection against one's products, going once more through the whole warning letter-infringement letter-attempted injunction-etc, knows the new (old) system is broken. Merely increasing the fees gives the CA the monies the national offices crave but it fully allows the trolling of SMEs to continue. Thanks a lot...

Tim Jackson said...


Legal certainty for third parties watching their competitors' patents was clearly a major reason for the 24 month time limits. One concern of the movers and shakers in the EPO was that (a very small minority of) applicants were keeping applications pending for a large part of the 20 year term by serially refiling divisionals.

But the 24 month time limits didn't address the biggest cause of such legal uncertainty. Instead, they were just unfair and gave problems to a large number of applicants who had legitimate reasons for wanting to file divisionals.

The reason that applicants were able to string out their applications for long periods of time, causing uncertainty for their competitors, was (and still is) the huge examination delays within the EPO itself.

Especially when a parent case has gone to appeal and an identical divisional is filed. Even today, Examining Divisions still just sit on those and await the outcome of the appeal. Usually all they have to do is nothing. But if necessary they even have a standard form letter (Form 2081) to suspend proceedings on the divisional, pending the outcome of the appeal on the parent.

Thus, the higher echelons of the EPO wring their hands about these awful alleged 'abusers' of the divisional system, while at the same time Examining Divisions facilitate such behaviour.

The Enlarged Board divisionals cases G1/05 and G1/06 arose because Technical Board 3.4.2 tried to develop a line of case-law to curb such serial divisionals. The Enlarged Board held that there there was no basis in the law for this.

Instead, the Enlarged Board suggested strongly that the answer to perceived 'abuses' lay in "administrative measures, such as giving priority to the examination of divisional applications and bundling and speedily deciding co-pending divisional applications so as to minimise the possibility for applicants to keep alive subject-matter on which the Examining Division had already given a negative opinion in one application by means of refiling the same subject-matter again and again" (paragraph 13.5 of the Reasons).

But the EPO didn't try any such administrative measures. They amended Rule 36 instead.

MaxDrei said...

Thanks Tim Jackson. Perhaps the EPO expects national courts to sanction abusers. Do you remember the Medinol stent litigation in the Dutch court, in which there were many generations of EPO divisional, successively opposed at the EPO, and in which eventually the judge dismissed the claimant from his courtroom, until such time as he could come back with a claim that had survived scrutiny by DG3? I recall CIPA J. published the judge's admonition, perhaps 3 years or so ago.

Is it reasonable of the EPO, to leave it to the national courts to curb such abuses?

Anonymous said...

Considering either the high variability in national court criteria or the costs (expected) of the UPC, I would go out on a limb and say better not leave it to the courts to solve grant issues. Unless one's living is from litigation, I suppose.

Anonymous said...

From the draft AC decision circulated by the EPI:

1. This decision shall enter into force on 1 April 2014.

2. It shall apply to divisional applications filed on or after that date.

Can somebody tell me why 2(2) is necessary?

Anonymous said...

@Anon 11:47

I assume the second point refers to the new fee on second generation and later divisionals.

Storz said...

My understanding is that under the amended rule, cases in which the 24 month deadline has expired may be re-opened for filing divisionals after april 1 2014. Can anybody confirm this, or do transitional regulations apply which we do not know yet ?

Roufousse T. Fairfly said...

Storz, the rule is drafted from the perspective of the divisional, not the parent. Starting 1.4 you have the right to file a divisional for any still pending parent EP application, regardless of when its first OA was sent out. What the previous rule 36 said doesn't matter anymore.

Paragraph (2) of the AC decision would be the transitional disposition: a divisional filed 31.3 which would be rejected under the old rule wouldn't suddenly become accepted the next day. It has to be in the box no earlier than the prescribed day.

That's my reading of it.

Anonymous said...

Ladies and Gentlemen, let's be honest here. Our businesses have benefited dramatically from the surge in divisional applications which we advised our clients to file. Resumption of normal business is unfortunate.

Karl said...

In response to Anonymous of Friday, 15 November 2013 09:39:00 GMT: I emphatically disagree with your comment. I try to look after my clients' interests as best as possible, and comments like yours undermine the reputation of our profession as a whole.

Anonymous said...

Agree completely with Karl.

(from a different anonymous)

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