Divisional applications continue to remain the subject of scrutiny and special measures at the EPO.

In fact, after the European Commission had issued an official report in which it had noted an alleged misuse of European divisional applications, in 2010 the EPO introduced a system whereby divisionals could only be filed within a certain period of time after the issuance of the 1st Examination Report for the parent application or after a new lack of unity objection had been raised. The hope was that this would reduce the number of divisional applications filed, thereby limiting the alleged misuse of the divisional system, to the benefit of third parties.

However, due to overwhelming user dissatisfaction with that system, and after finding that the number of divisionals had not decreased (in fact it actually increased), the EPO recently abolished this system and reintroduced the previous rule whereby European divisionals can be filed for as long as the parent application is pending. The previous rule will come back into force on 1 April 2014.

Nevertheless, the EPO has now taken a new step aimed at containing the number of second and further generation divisionals, again with a view to safeguarding legal certainty for third parties. Specifically, while up to now the filing fee for any European divisional application was the same as that for any other European application, as of 1 April 2014 a new sliding scale filing fee structure will apply for European divisional applications.

Keeping in mind that the basic filing fee for non-divisional applications is EUR € 120, any European divisional application qualifying as a second generation divisional will now require an additional filing fee of EUR € 210. The additional fee will amount to EUR € 420 for a third generation divisional, EUR € 630 for a fourth generation divisional and EUR € 840 for a fifth and further generation divisional. The goal is clearly to introduce a disincentive to file subsequent generation divisionals, which allegedly create uncertainty for third parties due to the continued pendency of such subsequent divisional patent applications.

In view of such increasing fee structure, applicants wishing to resort to divisional applications, e.g. to cover one or more of the additional inventions identified by the EPO when searching the parent application, may consider the option of filing all necessary divisionals at once, so that all such divisionals qualify as 1st generation divisionals and are therefore not affected by the increasing fee structure. Of course, the decision to file a divisonal generally depends not only on whether the EPO identifies more than one invention in the parent application, but also on the budget the applicant can allocate to the specific patent family and related technology. Thus, if the budget is limited when the several inventions are identified, but increases later e.g. due to the success of the invention on the market, delaying the filing of second and subsequent generation divisionals to a later stage, when the corresponding budget becomes available, may be a good enough reason to accept the fact that, in such case, the second and subsequent generation divisionals will entail the above sliding scale of increasing additional filing fees.

The new increasing filing fee structure thus requires a careful review before making any decision on when to file the divisionals that are necessary to confer the right protection on all inventions claimed and disclosed in the parent application. If the appropriate economic analysis is made, the increasing fee structure can certainly be dealt with by applicants in the best possible manner, ensuring that the possibility of pursuing all inventions of interest is retained while at the same time applying the most cost-effective strategy to this end.

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