EPO divisionals: time to have your say

European patent practitioners won't need reminding that EPC Rule 36 was amended in 2009 to limit the time within which a divisional application could be filed, imposing an absolute cut-off of two years from the first examination report (with limited exceptions). 

The EPO came in for a lot of stick then (and, to be honest, ever since) for the lack of proper consultation at the time that Rule 36 was amended, and for ignoring the almost universally negative input from most professional bodies and users of the patent system who did have the opportunity to comment.

24 months can pass very quickly ...

The EPO has now agreed to re-examine the controversial time limits in Rule 36 (as hinted at during the last epi Council meeting - see epi Information 4/2012, p. 99, downloadable in its entirety here). 

Input is sought by means of an open, online consultation on how Rule 36 ought to be amended.The structure of the consultation is simple: a web page with six questions, as follows: 

1. How has the introduction of the time limits for filing divisional applications affected you?
(It would be useful to learn about your background and / or your professional activity, as well as to get some insights into the extent to which your comments are the result of direct experience)

2. What is your overall assessment of current Rule 36 EPC?

3. What are, in your opinion, the most positive aspects of the current regime? Would it be possible to reinforce them? How?

4. Are there aspects of the Rule you think should be reconsidered? For example, should the time limits be extended from 24 to 48 or 60 months?

5. Do you think that further amendment of the Rule would help to optimise it? If so, could you please outline your preferred option?

6. What kind of action other than legal measures (e.g. administrative or financial ones) do you think the EPO could take that would effectively address the issue of divisionals filed merely in order to prolong pendency?

As the consultation page explains, the number of divisionals filed has actually increased since the new regime was introduced. Additionally, one of the practices preceived as "abusive" under the old regime, i.e. the filing of a divisional on the day before oral proceedings to maintain pendency, has been made largely unnecessary by Decision G 1/09 which allows for divisionals to be filed after refusal and up to the time limit for filing a notice of appeal.

So if (like this Kat) you have been critical of the 24 month cut-off, which often has expired long before the examination proceedings have crystallised the issues and thus shown the need to file a divisional, now's your chance to help craft the perfect replacement for Rule 36. (Merpel notes that "now" is indeed the time: there's no indication given of how long the consultation will run, so it wouldn't be wise to wait too long. Perhaps this is an oversight that the EPO will fix.) Edited to note: Thanks to the eagle-eyed correspondents who pointed out that the consultation will run until April 5, 2013, as noted on another page. Further edited to note that the closing date is now prominently displayed on the main explanatory page as well, so Merpel has been put well and truly back in her box.


The EPO deserves great credit for having the open-mindedness to revisit this controversial provision, and thanks are also due to those involved in epi and other organisations who have worked behind the scenes to have this issue re-opened.