In 2010, the European Patent Office (EPO) amended Rule 36 of the European Patent Convention to mandate that divisional applications could only be filed within two years after the first communication from the Examining Division of the EPO. After this two-year window, it was no longer possible to file divisional applications, except in extraordinary circumstances. In October 2013, the Administrative Council of the European Patent Office (EPO) announced that the 2010 amendments will be repealed. The repeal permits the filing of a divisional application at any time during the pendency of a parent application, regardless of when the parent application was filed. The changes will be effective as of April 1, 2014.
The new rule will apply to all applications that are pending on or after April 1, 2014, even if the deadline for filing divisional applications under the current regulations had already been determined or had lapsed. For many applications, the ability to file divisional applications will reopen.
The Administrative Council of the EPO announced that it will instigate progressive fees for divisional applications of divisional applications (i.e. second generation or later applications) to disincentivize the number of applications. The details of the new fee structure will be announced at a later date.
Clients that have pending European applications may wish to maintain the pendency of these current applications until after the April 1, 2014 effective date, in order to provide flexibility in formulating a divisional filing strategy.