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More confusion about EP divisionals

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

The IPKat doesn't understand why amendments to the law are often not fully thought through before they are brought in. Such is the case with the upcoming amendments to Rule 36 (among others) of the European Patent Convention which, as from 1 April 2010, will dictate strict, but uncertain, time limits on when divisional applications can be filed. More detail on the new rules can be found in the IPKat's previous posts here, here and here, and from the EPO's Administrative Council decision here.

The amended rules themselves are not very clear, as many patent attorneys will already know. The EPO have now issued a notice that attempts to explain how the new rules will work in practice, and clarify some of the wording used. Unfortunately, as might be expected, the notice is itself not very easy to follow. The IPKat has managed to get the following points from it, but there may be some others that his readers might be able to help with.

1. "Earlier" does not mean the same as "earliest", and is intended to refer to only the immediately preceding parent application, rather than the first parent application.

2. The examining division's "first communication" is one under Article 94(3); communications before this, i.e. from other EPO divisions, do not start the 2 year period.

3. A communication under Rule 137(5) cannot start the clock ticking, as it is not an objection of lack of unity under Article 82.

4. The Rule 126(2) 10 day rule counts.

5. The new Rule 36 applies only to divisional applications filed on or after 1 April 2010. If the time limit under the new Rule has expired by then, or is still running, a divisional can still be filed up until 1 October 2010.

Some of these clarifications inevitably raise further questions, which the IPKat has vaguely in mind but will leave to his readers to puzzle over and comment on if they feel so inclined.

Full post as published by IPKat on August 21, 2009 (boomark / email).