In a recent about-face, the European Patent Office (EPO) Administrative Council voted on October 16, 2013, to amend several rules of the European Patent Convention (EPC) dealing with the requirements for filing of divisional applications.¹  The EPO’s current rule, in force since April 1, 2010, limits the filing of European divisional applications to within two years of either the first examination report of the parent application, or the first objection of lack of unity under Article 82 EPC, whichever is the later.²

Two-Year Window Repealed
The amendments repeal the restrictive two-year window for filing divisional applications with effect from April 1, 2014.³  Under the amended rules, applicants will be allowed to file divisional applications as long as the earlier (parent) application is still pending, i.e., not abandoned, granted, or refused.  Thus, similar to EPO practice before April 2010, any pending EPO application can indefinitely give rise to further divisionals, and divisionals of divisionals, without a preset deadline.  The option to file a divisional application will apparently also be restored to European patent applications still pending on April 1, 2014, but for which the two-year window had previously closed under the current version of Rule 36(1) EPC.      

The strict time limits in place for the last several years were seen mostly as an attempt to curb the use of divisional applications as a means of extending the pendency of subject-matter under examination.  But, as an unintended consequence, time limits on dividing applications frequently led to filing additional, precautionary applications just before expiry of the twenty-four months.  A return to the former EPO rule permits waiting until a parent application is nearing grant before filing divisional applications.  Precautionary or “back-up” applications—often filed under the current rule before it can be known what subject matter will likely be allowed in the parent—may become less necessary.    

Additional Fees
The Administrative Council further announced that there will be additional fees for filing divisional applications of the second or subsequent generations.⁴  The amount of the additional fees has not been made public as yet. 

The fees applied to such application chains under amended Rule 38 EPC will potentially escalate with each divisional generation, until reaching a flat-fee maximum.  While such a progressive fee structure could reduce the number of divisional applications filed, the EPO has not announced the new fees, so it is difficult to predict how much delaying or filing divisionals of divisionals will affect overall cost and strategy.
 
Back-Annuities
The requirement to pay back-annuities for divisional applications remains.  European patent applications are subject to the payment of renewal fees to the EPO, submitted in advance of the year for which they are due.  Renewal fees are required from the third year following the European filing date, and for each subsequent year until the application is granted, at which time the payment of renewal fees is tied to the states in which the granted patent is validated.  When filing a divisional application, it is also necessary to pay renewal fees based on the filing date of the parent application (in other words, the renewal fees that would have been paid if the divisional had been filed on the same date of the parent).

Accordingly, while the amendment to Rule 36(1) EPC will permit delaying the filing of divisional applications, the fees associated with doing so continuously accrue.  For example, an applicant filing a divisional application five years after the parent application’s filing will still have to pay annuities for years 3, 4, and 5, respectively.  Upon reaching seven or eight years, an applicant could be on the hook for several thousand euros in annuities alone, on top of any regular fees (viz. filing, search, examination, designation, or excess claims or pages).  Furthermore, the base date for calculating the renewal fees is the first parent, so a second divisional of a first divisional must pay renewal fees based on the filing date of the parent of the first divisional, not the filing date of the first divisional.     

Permitted Matter
Notwithstanding the changes to the timing of divisional filings, there was no alteration to Articles 76(1) and 123(2) EPC, which mandate that a European divisional application may be filed only in respect of subject-matter which does not extend beyond the content of the earlier application as filed, and may not be amended in such a way that it contains subject‑matter which extends beyond the content of the application as filed.  Thus, anything disclosed in a divisional application must still be directly and unambiguously derivable from what is disclosed in each of the preceding applications. 

It is well-established that an applicant cannot add matter in a divisional application beyond what is disclosed in the parent, nor can an applicant recapture matter in a divisional application that was already refused in the parent by the EPO.  It is also not possible to use a second divisional of a first divisional to recapture subject-matter found only in the parent application and not in the first divisional.  This can be of particular concern if subject-matter of interest is found only in the claims of the parent that are not carried through to the first divisional.  These subject-matter restrictions on divisional practice persist despite the recent amendments.   

Conclusion
Now that the EPO has announced elimination of the twenty-four-month deadline for filing divisional applications, on condition that the parent is still pending, applicants will find that they have many more options in the prosecution of patent families.  Even applicants with currently pending EPO applications for which the two-year window has already closed may consider prolonging the examination at least five months to benefit from the new rule beginning April 1, 2014.  Nevertheless, the limitations on added matter remain, so a basis for any claim in a divisional application must be found in the parent application in the same way as if it had been presented as an amendment of the parent.

¹ See Decision of the Administrative Council of 16 October 2013 amending Rules 36, 38, and 135 of the Implementing Regulations to the European Patent Convention (CA/D 15/13) (“Decision of 16 October 2013”).

² See Rule 36(1) EPC (current version).

³ Decision of 16 October 2013 (“Rule 36(1) shall read as follows: ‘(1) The applicant may file a divisional application relating to any pending earlier European patent application.’”).

⁴ See Press Release, Revision of the requirements for the filing of divisional applications, European Patent Office (Oct. 18, 2013); Decision of 16 October 2013 (“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.’”).