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Fish Alert: EPO Announces Rule Changes Including the Repeal of the 24-Month Time Limit for Filing Divisional Applications

October 22, 2013

Legal Alerts

Fish Alert: EPO Announces Rule Changes Including the Repeal of the 24-Month Time Limit for Filing Divisional Applications

October 22, 2013

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European Patent Office announces 24-month time limit for filing divisional applications has been repealed.
The EPO announced on Friday, October 18, 2013, that Rule 36 EPC, which governs the filing of divisional applications, has been amended effective April 1, 2014. The 24-month time limit for filing divisional applications, introduced by the EPO in 2010, has been repealed.

For those applications currently in prosecution for which the time limit according to the current (old) Rules has already expired, it will be possible to file divisional applications on or after April 1, 2014—if the “parent” application is still pending at that time. Accordingly, should the filing of one or more divisional applications be desired, depending on the status of examination, strategies should be considered to ensure that the parent application will still be pending on April 1, 2014.

The EPO also announced that second and subsequent generations of divisional applications will be subject to additional fees. These fees, which will increase with each generation of the divisional application, will be set later in 2014. The fees are likely to be relatively moderate compared with other filing and maintenance fees due when filing a divisional application.

The new Rule relating to the timing of filing divisional applications benefits applicants because it increases the flexibility of filing divisional applications and removes any pressure to make decisions at an early stage, when the outcome of prosecution of a parent matter is still uncertain.

Case Law of the Boards of Appeal of the European Patent Office indicates a trend toward more flexibility in finding support for amendments in the original disclosure.
The EPO is known for its very strict standard of requiring sufficient original disclosure when applicants want to amend claims during prosecution. This approach has sometimes applied a formalistic or literal, rather than a technically meaningful, interpretation of original disclosure standards governed by Article 123(2) EPC.

A number of recent decisions by the Boards of Appeal emphasized that the technical teaching, not the mere wording used, is the important point for consideration.

For example, in decision T 667/08 the Board held that:

it is essential, when deciding on issues of added subject-matter, to identify the actual teaching conveyed by the original disclosure, i.e. the technical information that the skilled person reading the original disclosure would have derived from its content (description, claims and drawings) considered in its entirety. This approach might lead to the identification of subject-matter which has not been explicitly revealed as such in the application as filed, but nevertheless derives directly and unambiguously from its content. Literal support is not required by the wording of Article 123(2) EPC …

Decisions T 1906/11 and T 2619/11 also support this trend.

It might take some time until these decisions of the Boards of Appeal show effect in day-to-day prosecutions before the EPO.

Although this trend is encouraging, as it puts clear emphasis on the technical substance, it is expected that the original disclosure standard of the EPO will remain substantially stricter than the support standard for amendments as applied by the USPTO.

If you have any questions, please contact Jan-Malte Schley, PhD, Principal in Fish’s Munich office, at