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Guidelines for Examination

 
 
1.1.1.3
Mandatory 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:

(i)
notification of a communication according to Art. 94(3) and Rule 71(1) and (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 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 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 (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.

References

Rule 36(1)(b)