The European Patent Office (EPO) will implement a rule change on April 1, 2010, that will significantly tighten the timeline for seeking divisional patents. The change is designed to further the EPO’s intended practice of allowing only one patent for each distinct invention.
The EPO and the United States Patent Office have followed divergent approaches on this issue and will do so to a greater degree after the rule change. The USPTO permits an applicant to file a seemingly unending string of continuation and divisional patent applications based on a single invention. Some patent holders have adopted a strategy of filing a series of applications while waiting for the industry to settle on a technical direction so that the patent holder can craft its claims to read directly on a competitor’s product, sometimes ten or more years after the initial filing.
In contrast, the EPO has not tolerated this practice. The EPO rules generally allow an applicant to file follow-on applications at any time while a predecessor application is pending, but only for distinct inventions disclosed in the original. The number of such divisional applications would, in theory, be limited by the number of separate, identifiable inventions disclosed in an original patent application.
In practice, however, the dividing line between a distinct invention and inventions linked to a single inventive concept can be a bit murky. And so, rather than articulate how different an invention must be in order to qualify as distinct, the EPO is issuing rules that limit the time that an applicant has to file divisional applications.
New Rule 36(1): Have 24 months elapsed ?
Under the new Rule 36(1), a divisional application based on an earlier application may be filed only if the earlier application is still pending and either (1) 24 months have not yet elapsed from the EPO’s first Examination Report in regard to the earliest application for which a communication has been issued; or (2) 24 months have not yet elapsed from any communication in which the EPO has objected that the earlier application is directed to multiple, distinct inventions (EPO Rule 82).
The rules will apply to divisional applications filed on or after April 1, 2010, with interim rules existing until October 1, 2010, for currently pending applications. The industry expects a spike in divisional filings before the October 1 deadline.
The bottom line is that applicants seeking European patents need to act diligently if they wish to obtain additional patents based on an initial application.
For more information about the EPO’s new Rule 36(1), please contact Edward H. Sikorski.