patents
18 October 2013Patents

Controversial EU patent rule amended

The European Patent Office (EPO) has amended a controversial rule regarding divisional applications for patents.

The amendments, which have been passed by the EPO’s administrative council, cover Article 36 of the European Patent Convention, and will scrap a 24-month deadline within which divisional applications must be filed.

A divisional application is a type of patent application which contains matter from a previously filed application. It is generally used when the original application describes more than one invention, meaning the applicant is required to split it in two.

Under the current rules for the procedure, applicants may only divide a patent application within 24 months of the first office action.

The rules were approved in 2009 and came into force on April 1, 2010.

In March this year, after receiving negative feedback on the rules, the EPO announced it would be launching a consultation into if, and how, the rules of procedure should be amended.

The new amendments, which the EPO confirmed to WIPR have been accepted, call for a scrapping of the 24-month deadline and instead specify that divisional applications should still be accepted after the two-year period elapses.

"The 24-month time limit for the filing of a divisional patent application was introduced to prevent applicants from filing repeated divisionals and thus in effect keeping a pending application alive for many years after the original filing date,” said Adam Cooke, partner at DLA Piper in London.

“The practice of filing repeated divisionals caused real uncertainty for competitors as it wasn't clear what patent might emerge in the end. But, requiring applicants to file within two years meant that many more were filed, many unnecessarily as it was prudent to file before the deadline just in case.

"This put an extra burden on applicants and practitioners and clogged up the system."

According to Gwilym Roberts, partner at Kilburn & Strode LLP, in London, the introduction of the 24-month filing deadline had attracted criticism “from the start.”

“The EPO has been laudably magnanimous in this move … by inviting and acting on the results of a consultation the office has shown it takes its users' views seriously,” Roberts said.

“The change has practical implications: applicants may be able to revive divisional prospects for cases they had long given up on and we are likely to see a significant, if short term cottage industry springing up in keeping applications alive until the law change hits.”

The amended rule will come into effect for all divisional applications filed on or after 1 April 2014.

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