The European Patent Office (EPO) will be implementing several changes to the European patent rules in April 2010. Arguably the most onerous change relates to the filing of divisional applications. The rules are rather convoluted, but the primary consideration for applicants is that divisional strategies should be evaluated as early as possible in the prosecution of a European application, and at least at the time of receipt of a first examination report.

From 1 April 2010, a divisional application can only be filed within 24 months of issuance of a first examination report in respect of a pending parent application. This applies to reports only from the Examining Division – reports from the Search Division do not start the 24 month period. If the parent application is itself a divisional application, the 24 month period starts at issuance of the first examination report in respect of the grandparent application (the earliest application in a series), and so on for a series of applications.

Separately, an unrelated 24 month time period is provided to file a divisional application in response to a non-unity objection. The time period commences from the date of issuance of the examination report in which the non-unity objection is raised for the first time. However, a non-unity objection raised in an Extended European Search Report does not set the 24-month time period – the date of issuance of the corresponding examination report will be the relevant date.

Neither of the above time limits is extendable.

Please contact an attorney at Fisher Adams Kelly for more information or advice if you have existing applications in Europe, or intend to file an application in Europe, which may be subject to the new provisions.

Author: Clarissa Wynne
Contact: +61 7 3229 2655 cwynne@fak.com.au