New Draft EPO Guidelines
The EPO have just released a draft version of the Guidelines for Examination, to be implemented from 1 April 2010. This is when the Administrative Council decisions CA/D 2/09 and 3/09 come into force, making changes to the EPC that will change the way applicants have to deal with unity of invention and the final dates for filing divisional applications.
The IPKat has not yet had chance to read through all 594 pages of the Guidelines, but noticed in flicking through them the following new passages that may be of interest to his readers. This is an example of how the EPO sees the new rules on divisionals working in practice:
"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 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 which has been divided (this is EP2), and it is the earlier application (EP2) which must be pending according to
Rule 36(1).
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 in respect of EP2 (EP2 being the immediate parent application - see IV, 1.1.1.3)."The IPKat thanks the EPO for making the new rules so clear and easy to follow. He is now sure that there will be no problems at all come 1 October 2010.
Tufty wonders how the EPO will be forcing applicants to file those divisionals that the EPO considers to be mandatory. Aren't all divisional applications voluntary?
