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EP Divisional Applications - the new 2 year rule

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

Laurent Teyssedre has beaten the IPKat to it again, in announcing the result of today's EPO Administrative Council vote approving the following new version of Rule 36 EPC:

1) The applicant may file a divisional application relating to any pending earlier European patent application, provided that:
(a) the divisional application is filed before the expiry of a time limit of 24 months from the Examining Division's first communication in respect of the earliest application for which a communication has been issued, or
(b) the divisional application is filed before the expiry of a time limit of 24 months from a communication in which the Examining Division has objected that the earlier application does not meet the requirements of Article 82 EPC.

It looks like the IPKat's earlier suspicions about the proposed amendments have been confirmed, and the EPO will be holding to their promise of preventing 'abusive' divisional applications from being filed in future. The IPKat is, however, not certain about how the new Rule will work in practice. Will applicants be prevented from filing a divisional to cover embodiments no longer covered as a result of a limiting amendment, if 2 years have passed since the first communication under Article 94(3)? Will it be necessary to provoke an objection under Article 82 by submitting multiple independent claims so that a divisional application can be filed? What would happen if an objection under Article 82 were to be deliberately provoked; will this set the clock running again? Will there be a rush of divisional applications filed within 6 months of the rule coming into force? We shall presumably find out all this, and more, in due course...

Full post as published by IPKat on March 26, 2009 (boomark / email).