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Guidelines for Examination

 
 

1.1.1 When may a divisional application be filed?Pendency of the earlier application

With regard to when a divisional application may be filed, there are two requirements which must be met:

(i)
the application to be divided (the "parent" application on which the divisional is based) must be pending (see A‑IV, 1.1.1.1), and
(ii)
at least one of the following two periods must not yet have expired:
(a)
the period for voluntary division under Rule 36(1)(a) (see A‑IV, 1.1.1.2)
(b)
the period for mandatory division under Rule 36(1)(b), where applicable (see A‑IV, 1.1.1.3)

The term "earlier application" in Rule 36(1) refers to the immediate parent application on which the divisional application is based. This term is distinct from the term "earliest application" also appearing in Rule 36(1), although in the case of a first-generation divisional application (where the immediate parent is not itself a divisional) they both refer to the same application.

1.1.1.1The earlier application must be pending

A European patent application may be divided only when it is pending. In order to divide a European application, the applicant files one or more European divisional applications. It is irrelevant what kind of application the European patent application which is divided, i.e. the parent application, is. The parent application could thus itself be an earlier divisional application. In the case of the parent application being a Euro-PCT application, a divisional application can only be filed once the Euro-PCT application is pending before the EPO acting as a designated or elected Office, i.e. the Euro-PCT application must have entered the European phase (see E‑VIII, 2.4.1).

Art. 76
Rule 36(1)

As noted above, theThe parent application must be pending when a divisional application is filed. Reference is made in this regard to the observations made in decision G 1/09 as to what constitutes a pending application. In the case of an application being filed as a divisional application from an application which is itself a divisional application, it is sufficient that the latter is still pending at the filing date of the second divisional application. An application is pending up to (but not including) the date that the European Patent Bulletin mentions the grant of the patent (OJ EPO 2002, 112). It is not possible to validly file a divisional application when the parent application has been finally refused, withdrawn or is deemed to be withdrawn (see also the next two paragraphs).

If an application is deemed to be withdrawn due to the non-observance of a time limit (e.g. following failure to pay the filing fee (Art. 78(2)), to pay a renewal fee (Art. 86(1)), to pay the fee for grant and publishing or the claims fees, or to file the translation of the claims (Rule 71(7)) in due time), the application is no longer pending when the non-observed time limit has expired, unless the loss of rights, as communicated pursuant to Rule 112(1), is remedied. This may be effected either by means of an allowable request for further processing or, where further processing does not apply to the time limit in question, or the time limit for further processing has been missed, re-establishment of rights (which in the latter case is a request for re-establishment in respect of the period for further processing - see E‑VII, 2). The application which has been deemed to be withdrawn is however not pending in the period for further processing or for filing a request for re-establishment of rights or in the period after which such a requestrequests areis filed in the event of such requestrequests being refused (see J 4/11, reasons 21). Remedy of the loss of rights is also possible if the applicant considers that the finding of the EPO was inaccurate, by applying for a decision pursuant to Rule 112(2), whereupon either the competent EPO department shares his opinion and rectifies its decision or that department gives an unfavourable decision which is subsequently overturned on appeal. In this case the Office acknowledges that no loss of rights ever occurred and the application will have been pending throughout. If on the contrary the decision in effect confirms the loss of rights, the loss of rights will have occurred when the relevant time limit expired and the application ceased to be pending then. See J 4/11, reasons 22.

If an application has been refused and no appeal has yet been filed, the application is still pending within the meaning of Rule 36(1) until expiry of the time limit for filing the notice of appeal (Art. 108), and a divisional application can be validly filed until expiry of this period (see G 1/09). Where the applicant does file a notice of appeal, the decision to refuse cannot take effect until the appeal proceedings are over. As the provisions relating to the filing of divisional applications also apply in appeal proceedings (Rule 100(1)), a divisional application may be filed while such appeal proceedings are under way.The filing of a divisional application in either of these cases also requires that at least one of the periods under Rule 36(1)(a) and Rule 36(1)(b) has not yet expired (see A‑IV, 1.1.1.2 and A‑IV, 1.1.1.3).

Furthermore, even where an application is still pending, while it is subject to a stay of proceedings in accordance with Rule 14(1) (see A‑IV, 2.2), the filing of a divisional application is not possible because Rule 14(1) constitutes a lex specialis with regard to the right to file a divisional on a pending application provided for in Rule 36(1) (see J 20/05, and G 1/09, reasons for the decision 3.2.5).

The pendency of the earlier application is not a procedural deadline or time limit, which, in case of non-compliance, would lead to a loss of rights. Instead, it is a condition of a substantive nature for the filing of divisional applications (G 1/09, reasons 3.2.3). Therefore, the provisions on re-establishment of rights and further processing do not apply to the filing of divisional applications (J 10/01, reasons 15).

1.1.1.2Voluntary division

A divisional application may be filed on the basis of a pending earlier (parent) application before the expiry of a time limit of twenty-four months from the Examining Division's first communication in respect of the earliest application for which a communication has been issued (see, however, A‑IV, 1.1.1.3). The only events from which the period for voluntary division is calculated are (see the Decision of the Administrative Council dated 26 October 2010, OJ EPO 2010, 568; see also the Notice from the EPO dated 29 June 2010, OJ EPO 2010, 406):

Rule 36(1)(a)

(i)
notification of a first communication according to Art. 94(3) and Rule 71(1) and Rule 71(2), where this is not preceded by a communication according to Rule 71(3), and provided this is not an automatically generated communication on EPO Form 2001A (see Notice from the EPO dated 3 December 2012 on calculation of the time limit under Rule 36(1), OJ EPO 2013, 16), or
(ii)
notification of a communication according to Rule 71(3), where this is not preceded by a communication according to Art. 94(3) and Rule 71(1) and Rule 71(2).

The date of despatch of this communication will be entered in the European Patent Register (OJ EPO 2011, 273). Note however, that the information regarding this is inaccurate in so far as it refers to a communication issued on EPO Form 2001A (Notice from the EPO dated 3 December 2012 on calculation of the time limit under Rule 36(1), OJ EPO 2013, 16). This means that, in the cases concerned, the period under Rule 36(1)(a) will begin, irrespective of any communication on EPO Form 2001A, on notification of the examining division's first communication under Art. 94(3) and Rule 71(1) and Rule 71(2) or under Rule 71(3) in respect of the earliest application for which a communication has been issued. This information may be retrieved for example via online file inspection.

Notification of the search opinion (see B‑XI, 1.1) does not cause this twenty-four-month period to start because the Examining Division is not yet responsible for the application (see C‑II, 1). However, in cases where the applicant has waived his right to receive the communication according to Rule 70(2) (see C‑VI, 3), no search opinion is issued, but rather a communication according to Art. 94(3) and Rule 71(1) and Rule 71(2) (see B‑XI, 7), and notification of this communication does cause the twenty-four-month period to start. When calculating the twenty-four-month period for voluntary division, the ten-day rule applies in calculating the date of notification of the above communications (Rule 126(2) – see E‑I, 2.3 and E‑VII, 1.4).

The earlier (parent) application on which the divisional is to be based has to be pending at the time the divisional application is filed. If it lapses or is withdrawn before the first communication is sent in respect thereof in examination proceedings, a divisional application may no longer be filed (see A‑IV, 1.1.1.1). The same applies if the earlier (parent) application ceases to be pending after notification of the first communication referred to above but before expiry of the twenty-four-month period.

Where a first communication according to Art. 94(3) and Rule 71(1) and Rule 71(2) was based on the wrong application documents, notification of this communication does not start the period for voluntary division according to Rule 36(1)(a) (for more details see C‑IX, 1.3).

1.1.1.3Mandatory division

A divisional application may be filed on the basis of a pending earlier (parent) application before the expiry of a time limit of twenty-four months from any communication in which the Examining Division has objected that the earlier application does not meet the requirements of Art. 82, provided it was raising that specific objection for the first time. Where the period for mandatory division according to Rule 36(1)(b) expires later than the period for voluntary division according to Rule 36(1)(a), a divisional application may be filed within this later period on the basis of a pending earlier (parent) application. The events from which the period for mandatory division is calculated are:

Rule 36(1)(b)

(i)
notification of a communication according to Art. 94(3) and Rule 71(1) and Rule 71(2) which is either:
(a)
the first communication in the examination procedure, where this raises a specific objection of lack of unity for the first time or confirms a previous finding of lack of unity already raised during the international, European or supplementary European search, provided this first communication is not one on EPO Form 2001A (A‑IV, 1.1.1.2), or
(b)
a subsequent communication in the examination procedure, where this raises a specific objection of lack of unity for the first time.
(ii)
notification of a summons to oral proceedings, where a specific objection of lack of unity is raised for the first time therein;
(iii)
the date of notification of the minutes of oral proceedings, where a specific objection of lack of unity is raised for the first time during those oral proceedings, provided that the minutes of those oral proceedings reflect this newly raised objection of lack of unity (see E‑II, 10.3);
(iv)
notification of the minutes of a telephone call or a personal interview, where a specific objection of lack of unity is raised for the first time during that telephone call or personal interview and, in the case of a personal interview, the minutes are notified to the applicant or his representative at a later date (where the minutes are notified on termination of the interview, see (v) below), provided that the minutes reflect this newly raised objection of lack of unity (see C‑VII, 2.3 and C‑VII, 2.5);
(v)
the date of a personal interview, where a specific objection of lack of unity is raised for the first time during that personal interview and the minutes are notified to the applicant or his representative in person on termination of said interview, provided that the minutes reflect this newly raised objection of lack of unity (see C‑VII, 2.3 and C‑VII, 2.5);
(vi)
notification of a communication according to Rule 71(3), where the text proposed for grant by the Examining Division is an auxiliary request and where the accompanying reasoning indicating why the higher requests were not allowable (see C‑V, 1.1) raises for the first time a specific objection of lack of unity to at least one of those non-allowed higher requests.

In cases (i)(a), (i)(b), (ii), (iii), (iv) and (vi), when calculating the twenty-four-month period for mandatory division, the ten-day rule applies to calculation of the date of notification of these communications (Rule 126(2) - see E‑I, 2.3 and E‑VII, 1.4).

Note that notification of a search opinion raising an objection of lack of unity of invention does not cause the period for mandatory division to start according to Rule 36(1)(b) (see point (i)(a) above), because the Examining Division is not yet responsible for the application (see C‑II, 1). However, in cases where the applicant has waived his right to receive the communication according to Rule 70(2) (see C‑VI, 3), no search opinion is issued, but rather a communication according to Art. 94(3) and Rule 71(1) and Rule 71(2) (see B‑XI, 7), and notification of this communication, where it raises an objection of lack of unity, does cause the twenty-four-month period for mandatory division to start.

For first-generation divisional applications (where the earlier application on which the divisional is based is not itself a divisional), it is not possible for the period for mandatory division to expire earlier than the period for voluntary division. In most cases the two periods will expire at the same time, because the unity objection is typically raised in a first communication from the Examining Division or, if already raised at the search stage, is maintained therein. A confirmation in a later communication in examination of a lack of unity objection previously raised in examination proceedings does not cause the period for mandatory division to start again. In particular, where the Examining Division raises an objection of lack of unity in the first communication and in response the applicant deletes some of the additional inventions, but more than one invention remains in the claims and the Examining Division then issues a second communication (or a summons to oral proceedings) which maintains the previous objection of lack of unity in part (adapted to the deletion of some of the claimed inventions), this does not cause the period for mandatory division to start again, since the objection is not a new one.

However, where a different objection of lack of unity is subsequently raised, this does cause the twenty-four-month period for mandatory division to start again. This applies in cases where, for example, an invention identified in a previous non-unity objection is further sub-divided in a subsequent objection raised in the examination procedure.

Furthermore, an objection according to Rule 137(5) does not qualify as an objection according to Art. 82, in particular for the purposes of calculating the period for mandatory division (see H‑II, 6.2). However, the period for mandatory division does start if a communication raising an objection under Rule 137(5) also contains a further objection according to Art. 82.

1.1.1.4Second- and subsequent-generation divisional applications

Voluntary division (Rule 36(1)(a))

For the filing of second-generation divisional applications (i.e. divisional applications based on an earlier application which is itself also a divisional), the event which starts the period for voluntary division is the first communication in respect of the earliest application for which a communication has been issued. This is determined as illustrated by the following example:

Example 1
EP1 is the original European application,
EP2 is a divisional application based on EP1 and
EP3 is a divisional application based on EP2.

Where a first communication (see A‑IV, 1.1.1.2) has already been issued for EP1 when EP3 is filed, the period for voluntary division of EP2 is calculated from the date of notification of this first communication in respect of EP1. However, EP1 does not need to be pending. EP1 is the earliest application in respect of which a first communication has been issued (used to calculate the period for voluntary division), but it is not the earlier application on which the filed divisional application (EP3) is based. It is only the earlier application (EP2) which must be pending according to Rule 36(1).

A first communication in respect of EP2 which is notified either earlier or later than the first communication in respect of EP1 has no effect on the period for voluntary division as long as a first communication has been issued in respect of EP1 when EP3 is filed. In other words, when a first communication has been issued for EP1, the period for voluntary division of EP2 (by filing EP3) is always calculated from the notification of the first communication in respect of EP1. Obviously, this communication also allows for the division of EP1 within the same period, provided that EP1 is still pending.

In rare cases where no first communication has yet been issued in respect of EP1 when EP3 is filed, but one has been issued in respect of EP2, the period for voluntary division of EP2 (by the filing of EP3) will be calculated from the first communication as regards EP2 (which is then the earliest application in respect of which a first communication has been issued). If a first communication in respect of EP1 is issued subsequently (after the filing of EP3), it would trigger anew the period for a further voluntary division of EP2, provided that EP2 is still pending.

If no first communication has been issued for either EP1 or EP2 when EP3 is filed, the divisional is filed in time according to Rule 36(1), provided that EP2 is still pending.

Voluntary division in branched families of divisional applications

In cases where there are two divisional applications each derived from the same earlier (parent) application, the periods for voluntary division of the two divisional applications are calculated independently:

Example 2
EP1 is the original European application,
EP2a is a divisional application based on EP1 and
EP2b is a divisional application based on EP1.

In example 2, the period for voluntary division of EP2a is calculated with reference to the appropriate communication issued in respect of EP1 or EP2a (as indicated under example 1 above) but not EP2b. Likewise, the period for voluntary division of EP2b is calculated with reference to the appropriate communication issued in respect of EP1 or EP2b but not EP2a. These cases are treated in the same way as example 1 above, but ignoring any divisional applications which are not in a direct line from the divisional being filed to the earliest application.

Mandatory division (Rule 36(1)(b))

In example 1, the period for mandatory division of EP2 (by filing EP3) is calculated from the first communication in examination raising a specific objection of lack of unity for the first time (see A‑IV, 1.1.1.3). In this example, if a unity objection is raised in respect of EP1, regardless of whether the same objection is subsequently raised in respect of EP2, it is the unity objection in respect of EP1 which triggers the start of the twenty-four-month period for mandatory division of EP2 under Rule 36(1)(b) (see A‑IV, 1.1.1.3(i) to (vi), for the relevant dates triggering the start of this period). If, on the other hand, a unity objection is raised in respect of EP2 which was not raised in respect of EP1, the period for mandatory division of EP2 is triggered by the unity objection in respect of EP2.

1.1.1.5Legal remedies for late filing of a divisional application

Failure to file within the applicable twenty-four-month period

The periods specified in Rule 36(1)(a) and Rule 36(1)(b) are excluded from further processing (Rule 135(2)). If a divisional application is not filed within the later-expiring of the periods specified in Rule 36(1)(a) and Rule 36(1)(b) (see A‑IV, 1.1.1.2 and A‑IV, 1.1.1.3), the applicant may request re-establishment of rights in respect of this failure (see E‑VII, 2.2). The applicant must (i) request re-establishment (Rule 136(1)) and (ii) complete the omitted act (i.e. file the divisional application - Rule 136(2)) within a period of two months from the removal of the cause of non-compliance with the above-mentioned period (but at the latest within one year of expiry of the unobserved period).

Art. 121
Art. 122

Re-establishment of rights pursuant to Art. 122 is excluded in respect of the requirement for a divisional application to be filed while the earlier application is pending (see J 10/01). This is because, unlike the twenty-four-month periods for voluntary and mandatory division under Rule 36(1)(a) and Rule 36(1)(b), this requirement of Rule 36(1) does not constitute a time limit for the filing of a divisional application, but rather a point in time by which a divisional must be filed. Consequently, further processing is also not available.

References

Art. 76
Rule 36(1)

Rule 36(1)(a)

Rule 36(1)(b)

Art. 121
Art. 122