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Guidelines for Examination

 
 
1.1.1.4
Second- 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 (this is the usual situation), the period for voluntary division of EP2 (by the filing of EP3) is calculated from the date of notification of this first communication in respect of EP1. However, all that is required is that EP2 is still pending when EP3 is filed; EP1 does not need to be pending. This is because 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. which has been divided (this is EP2), and it 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, 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 filing EP3) is always calculated from the notification of the first communication in respect of EP2EP1. 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), irrespective of any communication subsequently issued in respect of EP1. 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.