EPO ignites hope for relaxed divisional window

In 2010, the Administrative Council of the European Patent Organisation amended Rule 36, EPC, relating to the filing of divisional applications. According to amended Rule 36, any divisional applications must be filed within a 24-month time limit triggered by the issuance of the first Office Action issued during substantive examination.

The amended Rule 36 has attracted some criticism. In particular, applicants have felt pressed by the current system to either abandon subject-matter that may be of value, or to file divisional applications pertaining to such subject-matter too early in the process, before its commercial value has crystallized.

In April, the EPO demonstrated that the criticism has not passed unheard. In an online user consultation, users of the EPC system were invited to give their feedback regarding the time limit for divisional applications. As a specific example of what changes to Rule 36 the EPO may be willing to consider, an extension of the 24-month time limit to e.g. 48 or 60 months was given.

The ongoing review of Rule 36 appears to be part of a pronounced strategy to raise the EPO’s attraction as designated or elected office in international applications. Recently, another user consultation suggested amendments to Rule 164, EPC, which will make it easier to change the invention that is to be further prosecuted on entry into the European stage.