After receiving significant negative feedback from users, at the end of last week the Administrative Council (AC) of the European Patent Organization has decided to finally abolish the current system relating to deadlines for filing divisionals off of European patent applications.

The current system, which was introduced in 2010, provided that divisionals could be filed only within a set period of time (24 months from the first Examining Division communication, with the additional possibility of filing divisionals within 24 months from the Examining Division communication raising a (new) lack of unity objection, in case such an objection was in fact raised in a given patent family). It had been hoped that the current system would reduce the total number of divisionals filed, especially with respect to second and subsequent generation divisionals, thereby providing legal certainty for third parties.

However, the user survey recently carried out by the European Patent Office (EPO) showed that the total number of divisionals had not decreased and that the number of first generation divisionals had in fact increased as a result of the current system (as many applicants had decided to file several first generation divisionals just before the relevant deadline, in order to safeguard their rights with respect to all aspects of the invention disclosed in a given European application). In addition, users noted the serious difficulty in determining the deadline for filing divisionals for any given European patent family. Indeed, such determination was so complex that, unlike virtually all other deadlines applicable in the European patent system, it could not be easily and safely performed by even the more experienced and knowledgeable administrative staff and paralegals.

As a result of the user feedback, and realizing that the goals envisaged when introducing the current system had not been achieved, last week the AC therefore decided to abolish the current system and to revert to the previous system, which merely requires that the parent European application be pending at the time when the divisional(s) is/are filed. This system is in fact perceived by most users as much more accessible and simpler to manage.

With a view to trying to contain the number of second and subsequent generation divisionals, on the same day the AC also decided to introduce increasing filing fees specifically for such divisionals. Since the stated of this new fee system goal is to contain the number of such divisionals, and not that of increasing the EPO finances, it is expected that the new filing fees will still be generally affordable.

The new (old) system will enter into force on April 1, 2014.

This is of course a most welcome change, as it will allow applicants and third parties to easily determine when divisionals can be filed and will no longer require the filing of multiple fall-back divisionals – given the EPO backlog in examining European applications – early on in in the proceedings relating to the parent case. It is expected that the reintroduction of the former system will therefore be beneficial to all users of the European patent system, both in terms of legal certainty and in terms of cost reduction.
The EPO official announcement regarding this most welcome piece of news can be found here:

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