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This is the fifteenth post in our 16-part series examining divisional practice in Argentina, Brazil, Canada, China, Europe, India, Indonesia, Malaysia, Mexico, Pakistan, Russia, Thailand, Saudi Arabia, Singapore, the United States, and Vietnam (in no particular order).  Our first fourteen posts examining divisional practice in Brazil, Mexico, China, India, Argentina, Canada, Thailand, Pakistan, Malaysia, Singapore, Russia, Saudi Arabia and Vietnam and can be found here:  Divisional Practice – Brazil, Divisional Practice – Mexico, Divisional Practice – China, Divisional Practice – India, Divisional Practice – Argentina, Divisional Practice – Canada, Divisional Practice -ThailandDivisional Practice – Pakistan, Divisional Practice – Malaysia, Divisional Practice – Singapore, Divisional Practice in Russia, Divisional Practice in Saudi Arabia, Divisional Practice in Vietnam and Divisional Practice – United States.

Divisional applications in Europe

For European patent applications, a divisional application must be filed while a parent application is pending.  A parent application is no longer pending when it is granted, definitively refused or definitively withdrawn.  In other words, a patent application is considered pending:,

  1. Until the day before the date of publication of the mention of grant of the patent in the European Patent Bulletin;
  2. Until the last day of the period for filing an appeal (even if an appeal is not subsequently filed), when the Examining Division has refused the patent application; and if an appeal is filed, during the subsequent appeal proceedings;
  3. On the day the European Patent Office (EPO) receives a written request to withdraw a patent application; or
  4. Until the last day of a time limit; where non-observance of the time limit results in the application being “deemed withdrawn” with “a loss of rights”; such as, for example, due to: a failure to (a) pay a fee in due time; (b) file a translation of the claims; or (c) respond to a communication from the Examining Division with respect to an application’s deficiencies. However, if the Applicant takes steps to remedy the loss of rights (for example by filing a request for further processing and paying the relevant fees) then the application will be deemed to have been pending throughout the period.   It is important to note that if the parent application is a Europe-PCT (Euro-PCT) application, it must enter the European regional phase either before or together with the divisional application in order to be deemed pending.

Requirements for Filing a Divisional Application

According to Rule 40 of the European Patent Code (EPC), when filing a divisional application, the following must be supplied to the EPO:

  1. A written statement that an European patent is being sought;
  2. Information identifying the Applicant or allowing the Applicant to be contacted; and
  3. A description or reference to a previously filed application (A reference to a previously filed application must state the filing date and the number of the application and the Office in which it was filed.  Such reference must indicate that it replaces the description and any drawings).

When an application contains a reference to a previously filed application, a certified copy of the previously filed application must be filed within 2 months of the filing of a divisional application, unless the reference application was originally filed with the EPO.  If the previously filed application is not in an official language of the EPO (namely, in English, French or German), a translation into one of the official languages will be required within 2 months of the filing of the divisional application.

The filing and search fee for a divisional application must be paid within one month after filing.  The designation fee must be paid within 6 months of the date on which the European Patent Bulletin mentions the publication of the European search report for the divisional application.

Claims of a Divisional Application

A divisional application may be filed with or without any claims.  If a divisional application is filed without any claims, the EPO will set a 2-month period for the Applicant to provide a set of claims.  Alternatively, a divisional application may be filed with the claims as originally filed in the parent or Euro-PCT application.  However, the claims of a divisional application filed with the same claims of a parent or Euro-PCT application will need to be amended at some point during prosecution to ensure that neither the parent or divisional application claim the exact same subject matter from one another.

Double Patenting

The EPC does not explicitly contain any specific provisions prohibiting double patenting (namely, the case of co-pending European patent applications having the same filing date, filed by the same Applicant, and claiming the same subject matter).  However, the Guidelines for Examination in the EPO (Guidelines) in Section G-IV-5.4 state that “it is an accepted principle in most patent systems that two patents cannot be granted to the same application for one invention”.  In fact, the Enlarged Board of Appeal (Board) in decisions G 1/05 and G 1/06 accepted a prohibition on double patenting.  The reasoning the Board gave is that an Applicant does not have a “legitimate” interest in proceedings leading to the grant of a second patent for the same subject matter if the Applicant already possesses a granted patent for that same subject matter.  According to the Board, it is permissible to allow an Applicant to proceed with 2 applications having the same description provided that the claims are distinct in scope and directed to different inventions.

In view thereof, substantial overlap between claims has been permitted by the EPO.  For example, if claims to a narrow genus are obtained in a first application (such as a parent application), the EPO is likely to allow claims to a broader genus that encompasses the species in  a divisional application.   Specifically, the Guidelines in Section G-IV-5.4 state that:

“…in the rare case in which there are two or more European applications from the same applicant definitively designating the same State or States (by confirming the designation through payment of the relevant designation fee) and the claims of those applications have the same filing or priority date and relate to the same invention, the applicant should be told that he must either amend one or more of the applications in such a manner that the subject matter of the claims of the applications is not identical, or choose which one of those applications he wishes to proceed to grant.  If he does not do so, once one of the applications is granted, the other(s) will be refused under Art. 97(2) in conjunction with Art. 125.  If the claims of those applications are merely partially overlapping, no objection should be raised (see T 877/06).  Should two applications of the same effective date be received from two different applicants, each must be allowed to proceed as though the other did not exist” (emphasis added).

Therefore, practically speaking, an Applicant is unlikely to receive a double patenting objection by an Examiner in a divisional application provided that the Applicant can show that the claims in the divisional application do not contain the identical scope of the parent application.

Examination of Divisional Applications

A divisional application is treated as a separate application and is accorded a separate application number, requires separate fees, requires a separate request for examination, will be prosecuted separately from the parent application, and will result in an independent patent from the parent application.  The fees for a divisional application are the same as for any parent application.  The term of patent for a divisional application is twenty years from the filing date of the very first parent application.

Other Important Information Regarding Divisional Applications

Unlike other jurisdictions where divisional applications can only be filed when a lack of unity objection is raised by the relevant Office, European divisional applications can be filed at any time (namely, before receipt of the Search Report or issuance of any communication from the Examining Division).

Furthermore, unlike other jurisdictions where divisional applications can only be filed with claims directed to an invention other than the first invention identified by the relevant Office, European divisional applications can be filed (subject to the above considerations on double patenting) with claims directed to any subject matter, provided that the subject matter is literally supported by both the European divisional application as originally filed and the parent application(s) as originally filed.  In particular, divisional applications can be filed with claims directed to subject matter only disclosed in the description and/or drawings of the parent application even where the claims of the parent application were never directed to such subject matter.

When filing and/or subsequently amending a divisional application, care must be taken to avoid an  “extension of subject matter” beyond that disclosed in both the divisional application as filed and the parent application as filed, as well as the priority application, if its priority is claimed. The Examining Division will apply the so-called ‘gold-standard’ for determining what is disclosed, i.e., only subject matter “which is directly and unambiguously derivable from the disclosure of the invention in the priority and/or parent application (excluding the abstract, but including the drawings), also taking into account any features implicit to a person skilled in the art in what is expressly mentioned (see G 2/98)”.  Applicants are recommended to include all the subject matter disclosed in the parent application in the divisional application, for example, by including the claims of the parent application (in the form of clauses) in the description of the divisional application.

Additionally, Applicants must take care not to definitively delete any subject matter from a parent application (for example due to a unity objection), since this subject matter cannot become part of its divisional application.

This post was written by Lisa Mueller and Verena Simpson, Lars Pallisgaard Olsen and Annette Sorensen of Guardian IP.

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