Chapter 1. The effects of division
Section 1.1. EPC applicable
It should be placed on the date of division to identify the applicable EPC (and not the filing date of the parent application, "Notice from the European Patent Office dated 20 September 2007 concerning the implementation of the transitional provisions applicable to the EPC 2000 during the transitional phase between the EPC 1973 and the EPC 2000” , OG 2007, 504).
Section 1.2. Benefit from the previous filing date
Division of a European patent application makes it possible to file a patent application benefiting from the filing date of another European application, ie the request "mother" (first request, A76 (1) EPC, last phrase).
Section 1.3. Publication of the file
During the division, the file of the previous application becomes accessible for everyone before the publication of this request and without the agreement of the applicant (A128 (3) EPC).
Chapter 2. The utility of divisional applications
The division is useful mainly in the event that one of your requests contains several inventions and that Examiner raised a "lack of unity of invention” (A82 CBE).
Indeed, under this assumption, some inventions had to be abandoned so that the examination could continue.
The filing of a divisional application is appropriate in this situation.
Chapter 3. Conditions for dividing a request
Section 3.1. The background conditions
3.1.1. Content of the request
1) Content extension
In a division, it is very important not to expand the content of the application beyond the disclosure of the parent application.
Indeed, theA76 (1) EPC provides that a divisional application:
[The divisional application] may be filed only for elements that do not extend beyond the content of the earlier application as filed.
It is for this reason that, in practice, one avoids modifying (or almost never, even to delete a sentence), the description of the divisional applications in relation to the mother request.
2) Competence to verify this condition
The Examining Division is competent to verify this condition (and not the filing section, J13 / 85).
3) Correction of a potential extension
The large board of appeal (G1 / 05but mostly G1 / 06) recognizes that breaches of this requirement may be corrected after division, even when the conditions of the division are no longer fulfilled (C-IX 1.4 Guidelines).
If there is no correction, the request is rejected (C-IX 1.4 Guidelines).
It is therefore not possible to transform this divisional application into a normal demand (T555 / 00).
4) Content of the application
The content of the application is constituted (G11 / 91) :
- of the description,
- drawings and
- claims (only if they were filed on the date of filing, ie outside the faculty of the R58 EPC).
Disclosure does not include the abstract (A85 CBE).
Nevertheless, the disclosure includes the missing parts added in accordance with the R56 EPC.
5) Second generation divisional application (and following)
If it is possible to divide a divisional application, the content of this new application can only benefit from the filing date of the previous application if it is present throughout the chain of the division, without ever having been abandoned on division dates (G1 / 05).
3.1.2. The revendications
1) Claims of the parent application
If during the examination of the parent application, the applicant deletes certain claims without indicating that he reserves the right to reintroduce them in a subsequent divisional application (J15 / 85), the Examining Division is required to refuse this claim in a divisional application.
Thus, any statement implying any abandonment of the claim should be avoided (C-IX 1.3 Guidelines).
It is possible to prove later that the real intention was to file a divisional application (T910 / 92).
2) Claims of divisional application
The claims of the divisional application may be completely different from the parent claim (this is normal, since that is precisely the goal).
In order to avoid everythingdouble patenting" (or "double patentability"), The EPO may refuse the grant of a patent if the divisional claims are identical with those of the parent application (C-IX Directives 1.6, G-IV Guidelines 5.4 or T1391 / 07).
However, they must be identical (same category, same technical characteristics, T1780 / 12).
Some rooms (T1423 / 07) consider, however, that there is no legal basis for such refusal.
On the other hand, if the claims of the divisional application overlap only partially with the claims of the parent application, no objection should be raised (T877 / 06).
Finally, and as recalled byA84 CBEnew claims must be based on the description.
Section 3.2. The conditions of form
3.2.1. Mother request types
It is possible to divide any European application.
- of divide several times the same request;
- or to realize chain divisions.
It is also possible to divide a Euro-PCT application the moment it entered the European phase (because the PCT does not contain any provision concerning division Directives A-IV 1.1, Guidelines E-IX 2.4.1, J18 / 09)
3.2.2. Mother application pending
In order to divide an application, it is necessary that the request which one seeks to divide is still pending: it is the letter of the R36 (1) EPC who imposes it.
But under this simple expression "request still instance" hides real difficulties.
Indeed, here are some special cases:
- if a request is deemed withdrawnit is considered pending until the expiry of the period in question not observed, ie the first period (J4 / 86):
- it is therefore necessary to divide at the latest the day before (ie the last day of the delay), but not the day of expiration.
- the date of notification of loss of rights does not matter.
- submitting a motion for decision according to the R112 (2) EPC does not maintain the pending application (J1 / 05).
- presenting a restitutio in integrum does not allow to keep the request pending if this request is subsequently refused (J4 / 11).
- if a request is rejectedit is considered to be pending:
- until the expiry of the appeal period if no appeal is lodged (G1 / 09), after the appeal period, it is no longer consideredJ22 / 13) or
- until the end of the appeal if an appeal is validlyGuidelines A-IV 1.1.1) because of the suspensive effect of that
- The end of the appeal may be the appearance of a ground of inadmissibility of the appeal - and not the decision finding it (eg the non-filing of the appeal brief will give rise to the grounds for inadmissibility at the end of the period to file it : it will therefore be possible to divide before the expiry of that period, J23 / 13but no division will be possible after the expiration of this period, J22 / 13);
- if a deadline of annual fee on a request not paidthe request is still pending until the end of the 6 months payment with surcharge (time allowed by R51 (2) EPC).
- if a request PCT has not entered yet European phaseit is not considered pending (J18 / 09).
- if the procedure for an application is suspended according to'A61 CBE, the application is momentarily no longer considered pending with regard to division (J20 / 05), since any other interpretation would be contrary to the purpose of the suspension of the proceedings: the protection of the proprietor.
- if the request is withdrawn, the effect of this withdrawal starts on the day the EPO receives the withdrawal declaration ("Notice dated 9 January 2002 concerning the amendment of Rules 25 (1), 29 (2) and 51 EPC” , OJ 2002, 112).
- it is therefore necessary to divide at the latest the day before, but not the same day.
- if the Examining Division decides to issue a patent, the patent application is considered pending until the day before the publication of the mention of the grant (D7 / 04):
- The grant decision does not take effect on the day when the decision-making process ends. "Notice dated 9 January 2002 concerning the amendment of Rules 25 (1), 29 (2) and 51 EPC” , OJ 2002, 112).
- An appeal against the grant decision does not allow the application to be held pending, since the appeal against a decision that grants its claims has no suspensive effect (D28 / 03).
If the divisional application is filed without claim, it is still possible to file claims even if the parent application is no longer pending.
3.2.3. Suspension of the proceedings
If the proceedings are suspended, it is not possible to file a divisional application (J20 / 05).
3.2.4. Mother request not "pending"
If the previous conditions are not fulfilled, the depositing section notifies the applicant (R112 (1) EPC) that a filing date can not be assigned to the divisional application.
3.2.5. deposit local
Unlike "standard" applications, divisional applications can only be filed with the EPO (A76 (1) EPC):
- The Hague ;
No deposit with a national office is possible (A75 (1) (b) EPC together A76 (1) EPC together R36 (2) EPC). If, by kindness, a national Office receives a divisional application and transmits it to the EPO, the filing date would be the date of receipt by the EPO (T196 / 10, Guidelines A-II 1.1 and Directives A-IV 1.3.1).
The language of filing of a divisional application must be that of filing the parent application or, alternatively, the one in which the application was translated (R36 (2) EPC).
Thus, if a European patent application has been filed in Italian and then translated into English in accordance with the requirements of theA14 (2) EPCit is possible to file a divisional Italian or in English.
In case of error, there is an irregularity (J13 / 14) :
- Irregularity is not an irregularity according to R57 EPC, which could be corrected after invitation according to the R58 EPC.
- The R139 EPC and theA123 (1) EPC are not applicable either.
Applicants for the divisional application must be exactly those of the parent application, unless an assignment has been validly entered in the BERS according to R143 (1) (f) EPC (J2 / 01) (in case of universal succession, this is not necessary T15 / 01).
Thus, if the parent application has more than one applicant, only one of these applicants may file a divisional application.
The assignment is validly entered in the BER when the following steps have been completed:
- produce a request to register the transfer :
- pay a administration fee (R22 (2) EPC):
- produce the proof of the assignment :
- it is not necessary to provide the surrender document, but a document proving the consent of the parties (the signature of both parties is mandatory, A72 EPC, E-XIV Guidelines 3);
- this proof can be provided in any language because it is proof (R3 (3) EPC), but a translation may be required by the Office.
- a document mentioning the obligation to assign an invention (eg employee) does not constitute proof of assignment (J12 / 00), because the assignment may never have occurred even though the obligation exists.
3.2.8. Designated countries
For extension countries, a request for extension of the effects of a divisional application is deemed to be filed only if the corresponding request is still valid in the original application, on the filing date of the divisional application (Directives A-III 12.1if the extension fee can or has been paid (Directives A-III 12.2):
- within the time limit of 6 months after publication of the search report,
- or, where appropriate, within the time limit for performing the acts required for the entry of an international application into the European phase.
The parent application representative is not automatically entitled to file divisional applications for this application.
Indeed, it must explicitly be indicated in the mother power that this is possible (in this case, the form 1003 has a pre-ticked box providing for this possibility) or a power must be redeposited (Directives A-IV 1.6).
Chapter 4. Taxes to pay
Section 4.1. Which tax schedule should be applied?
Before knowing which taxes to pay, we can ask which tax schedule should be applied:
- should we take the one applicable on the filing date of the parent application?
- should the one applicable on the filing date of the divisional application be taken?
Even if by the principle of legal fiction, the divisional application is assigned the date of filing of the parent application as the filing date, the "filing date" and "date on which the application documents were filed must not be confused. "as emphasized by the Enlarged Board of Appeal (G3 / 98).
Section 4.2. Deposit, research fees
4.2.1. Time limit
Deposit and search fees must be paid within 1 month from the division (R36 (3) EPC).
Otherwise, the request is deemed withdrawn (R36 (3) EPC).
TheA121 EPC is applicable.
4.2.2. Filing fee
Normally, the filing fee is 120 € electronically, 250 € if not (A2 (1) .1 RRT).
Since 1 April 2014, the filing fee is calculated according to the divisional's generation ("Decision of the Administrative Council of 13 December 2013 amending Rule 6 of the Implementing Regulation to the European Patent Convention and Article 14 (1) of the Rules relating to Fees” , OY 2014, A4, A2 (1) .1ter RRT). Thus, an additional fee is provided:
- for a second generation divisional application: 210 € ;
- for a third generation divisional application: 425 € ;
- for a fourth generation divisional application: 635 € ;
- for a fifth generation or later generation divisional application: 850 €.
4.2.3. Additional fee if more than 35 pages
The additional fee for more than 35 pages applies to all divisional applications filed on or after April 1, 2009 ("Notice from the European Patent Office dated 26 January 2009 on the 2009 fee structure” , OJ 2009, 118).
The additional fee if the application is more than 35 pages in length is A2 (1) .1bis RRT (15 € per page above strictly 35).
4.2.4. Research tax
In case of non-unity of invention of the parent application and payment of a new search fee to cover the second invention (object of the division) according to the R64 (1) EPC, a search fee will have to be paid (Guidelines A-IV 1.4.1).
The search fee is referred to inA2 (1) .2 RRT (1300 € for an application filed after 1 July 2005, 885 € for an application filed before July 1, 2005).
Nevertheless, a refund is possible (A9 (2) RRT).
Section 4.3. Designation fees
The designation fee must be paid within 6 months from the mention of the publication of the search report for this divisional application (R36 (4) EPC).
Otherwise, the request is deemed withdrawn (R39 (2) EPC).
TheA121 EPC is applicable.
Section 4.4. Claims fees
If the number of claims provided exceeds 15, a claim fee is payable for each claim from the 16th (R45 (1) EPC).
This tax is 235 € from the 16th claim to the 50th (A2 (1) .15 RRT) and of 585 € beyond.
It is necessary to pay this fee within a 1 month from the first filing of claims (R45 (2) EPC).
If no fee is paid, an irregularity notification is sent by the filing section to the applicant and a new 1 month it is granted (R45 (2) EPCthere is no surcharge).
TheA121 EPC is applicable to these two periods.
If at the end of the latter period the fees are still not paid, the corresponding claims are deemed abandoned (R45 (3) EPC).
Characteristics contained in a claim deemed abandoned, which are also in the description, can be reintroduced into the application (J15 / 88). If they do not appear in the description, the claims will be considered as truly abandoned and they can not be reintroduced (a priori, a modification of the description at the time of non-payment of the fee in order to show the support of the claims in the description should be acceptable).
4.4.4. Insufficient payment
If there is an insufficient payment of tax to cover all the claims and there is no indication, at the time of payment, of the claims for which the fees have been paid, a notification is sent to the applicant to find out (A6 (2) RRT).
If he does not respond, the payment is not deemed to be void (contrary to what is stated in the second sentence of A6 (2) RRTbecause this sentence no longer applies): payment is deemed to have been made for the first claims from the 16th (J9 / 84).
4.4.5. Referral case for claims
- until the applicant has produced the copy of the previous application:
- indeed, the applicant has a period of 2 months from the filing date to provide this copy (R40 (3) EPC);
- before the EPO does not know the number of claims;
- and as long as the deadline for 1 month from the filing date (R45 (2) EPC) has not expired (as a reference to claims of another application is properly considered to be a filing of claims within the meaning of that rule).
4.4.6. Abandonment of claim after deposit
Once the application is filed and before the payment of claims fees, it is not possible to abandon certain tax-exempt claims in order to benefit others (eg abandonment of all claims except 1-2 and 30 -25): only the first claims 1-15 will be exempt from taxes (J9 / 84).
If a claim is abandoned at a later stage of the proceedings, the claim fees that would have been paid are not refunded.
It is quite possible to reintroduce a claim considered abandoned during the examination (subject to the R137 (5) EPC) if and only if the object of the claim is in the description (J15 / 88, T490 / 90 and Directives A-III 9).
Section 4.5. Annual fees
When filing a divisional application, a corresponding fee (R51 (3) EPC):
- all annual taxes due on the filing date of the divisional application for the parent application;
- optional, to the annual fee which would expire within a 4 months from the division.
These taxes are due at the deposit, but can be paid without surcharge in a delay of 4 months from the division (R51 (3) EPC).
In addition, this payment may be made within a 6 months with surcharge (R51 (2) EPC) from the due date, ie:
- the filing date of the divisional application for annual fees due on the filing date of the divisional application, or
- the true due date for the annual fee that would expire within a 4 months from the division.
Chapter 5. Some procedural elements
Section 5.1. Priority
It is possible to claim a priority if it has been in the parent application (Directives A-IV 1.2.2):
- if the parent application still claims that priority, that priority claim is automatic ;
- otherwise, you have to do the explicit approach of priority claim.
If the certified copy has already been produced, it is not necessary to reproduce it (Directives A-IV 1.2.2 andDecision of the President of the European Patent Office dated 12 July 2007 concerning the filing of priority documents in the case of European divisional applications” , OG 2007, Special Edition No. 3, B.2, art. 1 (1)).
Otherwise, it must of course always be produced within the 16 months from the earliest priority (R53 (1) EPC), unless, in the meantime, the priority documents have been provided for the parent application: the EPO must then be informed (Directives A-IV 1.2.2).
Section 5.2. Production of previous research
It is not necessary to provide a new copy of an earlier search according to theA124 (1) EPC together R141 (1) EPC (“Notice from the European Patent Office dated 28 July 2010 concerning amended Rule 141 EPC and new Rule 70b EPC - use system” OG 2010, 410, point 2.1 and Directives A-III 6.12)
However, if no previous research was available on the day of division, it will be necessary to respond to the notification according to the R70ter (1) CBE.
Section 5.3. Reference to an earlier application
Nevertheless, the copy of the previous application and its translation will not be produced because the EPO has access to it (Directives A-IV 1.3.1).
Section 5.4. Request for grant
The request for grant must explicitly state that the application constitutes a divisional application and indicate the number of the earlier application (R41 (2) (e) EPC).
If the EPO realizes that it is a divisional application when it is not indicated in the application, the EPO notifies the applicant of this irregularity (Directives A-IV 1.3.2).
This period does not benefit from theA121 EPC.
If nothing is done within this period, the request is rejected (A90 (5) EPC).
Section 5.5. Transformation of a divisional application into normal demand?
When filing a divisional application, it is not possible, after the filing, to "transform" the divisional application into a normal application (in particular if the divisional application violates the provisions of theA76 CBE) (C-IX 1.4 Guidelines).
Chapter 6. Special situations
Section 6.1. The "divisional applications poisoned"
6.1.1. Example of a factual situation
As an illustration, let's put ourselves in the following situation:
- A request P has been filed in the USA, this application describes an embodiment implementing, together, two objects A and B ie A + B. Embodiment A + B is claimed.
- An EP1 application is filed in Europe and claims the priority of the application P. Nevertheless, the applicant imagines some improvements and considers that the objects A and B can be implemented separately (ie enlargement of the invention). These objects A and B are therefore claimed. The European examiner is fussy, he raises a lack of unity of invention and invites the applicant to choose the invention he wishes to protect. The examiner also informs the applicant of the possibility of dividing his application.
- Also seeking to protect object B, and on the advice of the examiner, the applicant divides his EP1 application by filing a divisional application EP2 and claims object B.
Until then, you will tell me that everything is fine ... and yet as you will see, the plaintiff has just lost his two applications EP1 and EP2!
Let's analyze the claim of object A of EP1:
- claim A is not supported by priority P.
- Thus, the priority of the request P is not valid for this claim;
- the effective date for claim A is then the filing date of EP1.
- As regards the object A + B, it is disclosed by the European application EP2.
- This object is also disclosed by the priority document;
- the object A + B has for effective date the filing date of the application P.
- Since the EP2 application is a European application, it can be used as a prior art document for novelty (document A54 (3) EPC)
- The object A + B being more specific than the object A, the disclosure A + B in EP2 anticipates the claim of A in EP1.
Similar reasoning can be made with the claim of object B of EP2.
So as a result, EP1 is not new in terms of EP2 and EP2 is not new compared to EP1, all because of this damn division ...
This reasoning was validated by the decision T1496 / 11.
6.1.2. The large board of appeal saves us
In a decision G1 / 15, the large board of appeal tells us:
The right to partial priority can not be refused under the EPC for a claim that includes alternative objects because of one or more generic expressions or in some other way (generic claim of the "OR" type) for as far as these alternative objects have been disclosed for the first time, directly or at least implicitly, unambiguously and sufficiently in the priority document. No other substantive conditions or limitations apply in this regard.
Thus, we must follow the following reasoning (point 6.3 of the decision):
- determine the object disclosed in the priority application and which is relevant to the prior art disclosed during the priority period,
- consider whether this object is encompassed by the claim of the claim claiming priority
If so, the claim is effectively divided into two parts conceptually:
- the first corresponding to the invention disclosed directly and unambiguously in the priority document,
- the second being the remaining part of the "OR" claim, which does not benefit from the priority but in itself gives rise to a right of priority under Article 88 (3) EPC.
So whew ...