Divisional Applications

The effects of division

Applicable EPC

It is appropriate to refer to the date of division to identify the applicable EPC (and not to the filing date of the parent application, « Communication from the European Patent Office dated 20 September 2007 concerning the implementation of the transitional provisions under the EPC 2000 during the transitional period between the EPC 1973 and the EPC 2000 », OJ 2007, 504).

Benefit of the earlier filing date

The division of a European patent application allows the filing of a patent application benefiting from the filing date of another European application, i.e. the « parent » application (the very first application, A76(1) EPC, last sentence).

Publication of the file

Upon division, the file of the earlier application becomes accessible to everyone before the publication of this application and without the applicant’s consent (A128(3) EPC).

The usefulness of divisional applications

Division is mainly useful in the event that one of your applications contains several inventions and the Examiner has raised a « lack of unity of invention » (A82 EPC).

Indeed, under this hypothesis, certain inventions had to be abandoned so that the examination could continue.

The filing of a divisional application is highly recommended in this situation.

Conditions for dividing an application

Substantive conditions

Content of the application

Extension of content

During a division, it is very important not to extend the content of the application beyond the disclosure of the parent application.

Indeed, A76(1) EPC states that a divisional application:

[The divisional application] may only be filed for subject-matter which does not extend beyond the content of the earlier application as filed.

In reality, the examination of A76(1) EPC is the same as that of A123(2) EPC (T514/88).

This is why, in practice, we avoid modifying (or almost never, even to delete a sentence) the description of divisional applications compared to the parent application.

Competence to verify this condition

The Examination Division is competent to verify this condition (and not the Receiving Section, J13/85).

Correction of a potential extension

The Enlarged Board of Appeal (G1/05, but especially G1/06) admits that failures to meet this requirement may be corrected after the division, even when the conditions for division are no longer fulfilled (Guidelines C-IX 1.4).

If there is no correction, the application is rejected (Guidelines C-IX 1.4).

It is then not possible to convert this divisional application into a regular application (T555/00).

Content of the application

The content of the application is constituted (G11/91) by:

• the description,
• the drawings, and
• the claims (only if they were filed on the filing date, i.e. excluding the option under Rule 58 EPC).

The disclosure does not include the abstract (Article 85 EPC).

However, the disclosure includes the missing parts added in accordance with Rule 56 EPC.

Second-generation (and subsequent) divisional application

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 division chain, without ever having been abandoned on the dates of the divisions (G1/05).

The claims

Claims of the parent application

If during the examination of the parent application, the applicant deletes certain claims without indicating that they reserve the right to reintroduce them in a subsequent divisional application (J15/85), the examining division is required to refuse that claim in a divisional application.

Thus, any statement implying any abandonment of the claim should be avoided (Guidelines C-IX 1.3).

It is possible to subsequently prove that the true intention was to file a divisional application (T910/92).

Claims of the divisional application and double patenting

The claims of the divisional application can be completely different from the parent application (this is normal, since this is precisely the purpose).

In order to avoid any « double patenting », the EPO may refuse to grant a patent if the claims of the divisional application are identical to those of the parent application (Guidelines C-IX 1.6, Guidelines G-IV 5.4 or T1391/07).

However, they must be identical:

• same category, same technical features (T1780/12),
• same commonly designated countries (G4/19).

The legal basis for the rejection of « double patenting » will be A97(2) EPC and A125 EPC (« generally accepted principles in this matter in the Contracting States« , G4/19).

This prohibition was reaffirmed in the decision T1128/19, where the Board of Appeal rejected a divisional application whose claims related to the same subject matter as those of the parent patent.

Note, however, that it is quite possible to file a divisional application with the same set of claims, provided that this set is temporary and is intended to be modified later (G1/05 and G1/06).

On the other hand, if the claims of the divisional application only partially overlap with the claims of the parent application, no objection should be raised (T877/06).

Finally, and as recalled by A84 EPC, the new claims must be based on the description.

Formal conditions

Types of parent application

It is possible to divide any European application.

As shown in the previous diagram, it is quite possible (Guidelines A-IV 1.1.1 or Guidelines C-IX 1.1, T1158/01, G1/05) :

• to divide several times the same application;
• or to carry out chain divisions.

It is also possible to divide a Euro-PCT application once it has entered the European phase (since the PCT contains no provisions concerning divisional applications, Guidelines A-IV 1.1, Guidelines E-IX 2.4.1, J18/09).

Pending parent application

To be able to divide an application, it is necessary that the application you are seeking to divide is still pending: this is the letter of R36(1) EPC which imposes it.

But behind this simple expression « still pending application » lie real difficulties.

Indeed, here are some special cases:

• if an application is deemed to be withdrawn, it is considered pending until the expiration of the unobserved deadline in question, i.e. the first deadline (J4/86) :
  • it is therefore necessary to divide at the latest the day before (i.e. the last day of the deadline), but not on the day of expiration itself.
  • the date of notification of the loss of rights is of little importance.
  • the fact of presenting a request for a decision according to R112(2) EPC does not allow the application to be kept pending (J1/05).
  • the fact of presenting a restitutio in integrum does not allow the application to be kept pending, if this request is subsequently refused (J4/11).
• if an application is refused, it is considered pending:
  • until the expiration of the appeal deadline if no appeal is filed (G1/09), after the appeal deadline, it is no longer considered pending (J22/13) or
  • until the end of the appeal if an appeal is validly filed (Guidelines A-IV 1.1.1) due to the suspensive effect of the appeal
    • The end of the appeal can be the emergence of a cause of inadmissibility of said appeal – and not the decision noting it (e.g. the non-filing of the appeal brief will give rise to the cause of inadmissibility at the end of the deadline to file it: it will therefore be possible to divide before the expiration of said deadline, J23/13, but no division will be possible after the expiration of this deadline, J22/13) ;
• if a deadline for an annual fee relating to an application is not paid, the application is still pending until the end of the 6-month period for payment with surcharge (deadline provided by R51(2) EPC).
• if a PCT application has not yet entered the European phase, it is not considered pending (J18/09).
• if the procedure relating to an application is suspended according to A61 EPC, the application is temporarily no longer considered pending with regard to division (J20/05), because any other interpretation would be contrary to the objective of the suspension of the procedure: the protection of the proprietor.
• if the application is withdrawn, the effect of this withdrawal begins on the day the EPO receives the declaration of withdrawal (« Notice dated January 9, 2002, relating to 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 on the day itself.
• if the Examination Division decides to grant a patent, the patent application is considered pending until the day before the publication of the mention of the grant (J7/04, J8/19) :
  • The decision to grant does not take effect on the day the decision-making process ends (« Notice dated January 9, 2002, relating to the amendment of Rules 25(1), 29(2) and 51 EPC », OJ 2002, 112).
  • An appeal against the decision to grant allows the application to be kept pending (J1/24 contra J28/03).

If the divisional application is filed without claims, it is always possible to file claims even if the parent application is no longer pending.

Parent application not « pending » 

If the above conditions are not met, the Receiving Section notifies the applicant (R112(1) EPC) that no filing date can be accorded to the divisional application.

Place of filing

Unlike « classic » applications, divisional applications can only be filed with the EPO (A76(1) EPC) :

• The Hague 
• Munich 
• Berlin.

No filing with a national office is possible (A75(1) b) EPC together A76(1) EPC together R36(2) EPC). If, as a courtesy, a national office were to receive a divisional application and forward it to the EPO, the filing date would be the date of receipt by the EPO (T196/10, Guidelines A-II 1.1 and Guidelines A-IV 1.3.1).

Languages

The language of filing of a divisional application must be that of the filing of the parent application or, at the applicant’s choice, that into which the application was translated (R36(2) EPC).

Thus, if a European patent application was filed in Italian and then translated into English in accordance with the provisions of A14(2) EPC, it is possible to file a divisional application in Italian or in English.

In case of error, there is an irregularity (J13/14) :

• The irregularity is not an irregularity under R57 EPC, which could be corrected after invitation under R58 EPC.
• R139 EPC and A123(1) EPC are also not applicable.

Applicants

The applicants of the divisional application must be exactly the same as those of the parent application, unless an assignment has been validly recorded in the EPO Register 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 multiple applicants, only one of these applicants cannot file a divisional application.

The assignment is validly recorded in the EPO Register when the following steps have been completed:

• provide a request for the recording of the transfer:
  • this request must be signed by the party submitting the request (R50(3) EPC);
  • this request must be submitted in an official language of the EPO (R3(1) EPC). A14(4) EPC is not applicable, as this is not a document to be submitted within a specified time limit.
• pay an administrative fee (R22(2) EPC):
  • it is set by the President of the EPO (A3 RFR) and published in the OJ.
  • It is currently 70 € (« Schedule of fees and official fees« , OJ 3/2012, supplement, 2.1 point 1, p19).
• provide the proof of the assignment:
  • it is not necessary to provide the assignment document, but a document proving the consent of the parties (the signature of both parties is mandatory, A72 EPC, EPO Guidelines E-XIV 3);
  • this proof can be provided in any language, as it is evidence (R3(3) EPC), but a translation may be required by the Office.
  • a document mentioning the obligation to assign an invention (e.g., employee) does not constitute proof of assignment (J12/00), as the assignment may never have taken place even if the obligation exists.

Designated States

States not designated in the earlier application (or whose designation has been withdrawn, even after filing) cannot be (re)introduced (A76(2) EPC, G4/98, J12/18 and EPO Guidelines A-IV 1.3.4).

For extension states, a request for the extension of the effects of a divisional application is deemed to have been filed only if the corresponding request is still valid in the initial application at the date of filing of the divisional application (EPO Guidelines A-III 12.1), i.e., if the extension fee can or has been paid (EPO Guidelines A-III 12.2):

• within the time limit of 6 months after the publication of the search report;
• or, where applicable, within the time limit for performing the acts required for the entry of an international application into the European phase.

Representative

The representative of the parent application is not automatically authorized to file divisional applications for that application.

Indeed, it must be explicitly indicated in the original power of attorney that this is possible (in this case, the form 1003 has a pre-checked box providing for this possibility) or a new power of attorney must be filed (EPO Guidelines A-IV 1.6).

Official fees to be paid

Which fee schedule should be applied?

Before determining which fees need to be paid, we may wonder which fee schedule should be applied:

• Should we use the one applicable on the filing date of the parent application?
• Should we use the one applicable on the filing date of the divisional application?

Even if, by the principle of legal fiction, the divisional application is deemed to have the same filing date as the parent application, we must not confuse « filing date » and « date on which the application documents were filed, » as pointed out by the Enlarged Board of Appeal (G3/98).

Thus, the amount of a fee is determined, as usual, based on the time when it becomes due and is paid (J7/13 and Guidelines A-X 5.1.2).

Filing and search fees

Deadline

The filing and search fees must be paid within a period of 1 month from the division (R36(3) EPC).

Otherwise, the application is deemed to be withdrawn (R36(3) EPC).

A121 EPC applies.

Filing fee

Normally, the filing fee is 115 € if filed electronically, 200 € otherwise (A2(1).1 RFees).

Since April 1, 2014, the filing fee is calculated based on the generation of the divisional application (« Decision of the Administrative Council of 13 December 2013 amending Rule 6 of the Implementing Regulations to the European Patent Convention and Article 14(1) of the Rules relating to Fees », OJ 2014, A4, A2(1).1ter RFees). Thus, an additional fee is provided:

• for a second-generation divisional application: 210 €;
• for a third-generation divisional application: 420 €;
• for a fourth-generation divisional application: 630 €;
• for a fifth-generation or subsequent generation divisional application: 840 €.

Additional fee if more than 35 pages

The additional fee for more than 35 pages applies to all divisional applications filed as of April 1, 2009 (« Communication from the European Patent Office dated January 26, 2009, concerning the 2009 fee structure », OJ 2009, 118).

The additional fee if the application has more than 35 pages is referred to in A2(1).1bis RFees (14 € per page strictly above 35).

Search fee

In the event of a lack of unity of invention in the parent application and payment of a new search fee to cover the second invention (subject of the division) under R64(1) EPC, a search fee must be paid (Guidelines A-IV 1.4.1).

The search fee is referred to in A2(1).2 RFR (1165 € for an application filed after July 1, 2005, 840 € for an application filed before July 1, 2005).

However, a refund is possible (A9(2) RFR).

Designation fees

The designation fee must be paid within a period of 6 months from the mention of the publication of the search report established for this divisional application (R36(4) EPC).

Otherwise, the application is deemed to be withdrawn (R39(2) EPC).

A121 EPC applies.

Claims fees

Principle

If the number of claims provided exceeds 15, a claims fee is due for each claim from the 16th claim onwards (R45(1) EPC).

This fee is 225 € from the 16th to the 50th claim (A2(1).15 RFR) and 555 € beyond that.

Time limits

It is necessary to pay this fee within a period of 1 month from the first filing of claims (R45(2) EPC).

If no fee is paid, a notification of irregularity is sent by the filing section to the applicant and a new period of 1 month is granted (R45(2) EPC, there is no surcharge).

A121 EPC applies to these two time limits.

Sanction

If at the end of this last period, the fees are still not paid, the corresponding claims are deemed to be abandoned (R45(3) EPC).

The features appearing in a claim deemed to be abandoned, and which are also found in the description, can be re-introduced into the application (J15/88). If they do not appear in the description, the claims will be considered as truly abandoned and they cannot be re-introduced (a priori, a modification of the description at the time of non-payment of the fee in order to make the support of the claims appear in the description should be acceptable).

Insufficient payment

If there is an insufficient payment of fees to cover all 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) RFR).

If he does not respond, the payment is not considered as not having taken place (contrary to what is indicated in the second sentence of A6(2) RFR, as this sentence no longer applies): the payment is considered as having been made for the first claims from the 16th claim onwards (J9/84).

Referral of claims

The notification of irregularity under R45(2) EPC will not be sent (Guidelines A-III 9) :

• as long as the applicant has not provided 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 knows the number of claims ;
• as long as the 1-month period from the filing date (R45(2) EPC) has not expired (since a referral to claims of another application is indeed considered as a filing of claims within the meaning of this rule).

Abandonment of claims after filing

Once the application is filed and before the payment of the claims fees, it is not possible to abandon certain claims exempt from fees in order to benefit the others (e.g., abandonment of all claims except 1-2 and 30-25) : only the first 15 claims will be exempt from fees (J9/84).

If a claim is abandoned at a later stage of the procedure, the claims fees that have been paid will not be refunded.

It is quite possible to reintroduce a claim considered as abandoned during the examination (subject to R137(5) EPC) if and only if the subject matter of the claim is found in the description (J15/88, T490/90 and Guidelines A-III 9).

Annual fees

When filing a divisional application, a fee corresponding to (R51(3) EPC) must be paid:

• all annual fees due on the filing date of the divisional application for the parent application ;
• optionally, the annual fee that would fall due within a period of 4 months from the division.

These fees are due at the time of filing but can be paid without surcharge within a period of 4 months from the division (R51(3) EPC).

Furthermore, this payment can be made within a period of 6 months with a surcharge (R51(2) EPC) from the due date, i.e. :

• the filing date of the divisional application for the annual fees due on the filing date of the divisional application, or
• the actual due date for the annual fee that would fall due within a period of 4 months from the division.

Some procedural elements

Priority

It is possible to claim a priority if it was claimed in the parent application (Guidelines A-IV 1.2.2) :

• if the parent application still claims this priority, this priority claim is automatic ;
• otherwise, the explicit step of claiming priority must be taken.

If the certified copy has already been produced, it is not necessary to produce it again (Guidelines A-IV 1.2.2 and « Decision of the President of the European Patent Office, dated July 12, 2007, concerning the filing of priority documents in the case of European divisional applications« , OJ 2007, special edition No. 3, B.2, Art. 1(1)).

Otherwise, it must of course always be produced within the 16-month period 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 (Guidelines A-IV 1.2.2).

Production of a prior art search

It is not necessary to provide a new copy of a prior art search according to A124(1) EPC together with R141(1) EPC (« Notice from the European Patent Office dated 28 July 2010 concerning amended Rule 141 EPC and new Rule 70ter EPC – use system » OJ 2010, 410, point 2.1 and Guidelines A-III 6.12)

However, if no prior art search was available on the date of division, it will be necessary to respond to the notification according to R70ter(1) EPC.

Reference to a previous application

It is possible to make a reference to the parent application (R40(1) c) EPC and Guidelines A-IV 1.3.1).

However, the copy of the previous application as well as its translation will not need to be produced, as the EPO has access to it (Guidelines A-IV 1.3.1).

Request for grant

The request for grant must explicitly indicate that the application constitutes a divisional application and indicate the number of the previous application (R41(2) e) EPC).

If the EPO realizes that it is a divisional application but this is not indicated in the request, the EPO notifies this irregularity to the applicant (Guidelines A-IV 1.3.2).

They then have a period of 2 months to correct (A90(3) EPC together with R57 b) EPC together with R58 EPC).

This period does not benefit from A121 EPC.

If nothing is done within this period, the application is rejected (A90(5) EPC).

Transformation of a divisional application into a normal application ?

When filing a divisional application, it is not possible, after the filing, to « transform » the divisional application into a normal application (especially if the divisional application violates the provisions of A76 EPC) (Guidelines C-IX 1.4).

Special situations

« Poisonous divisional applications »

Example of a factual situation

By way of illustration, let us consider the following situation:

• A patent application P has been filed in the USA. This application describes an embodiment implementing, together, two objects A and B, i.e. A+B. The embodiment A+B is claimed.
• An EP1 application is filed in Europe and claims the priority of application P. However, the applicant envisages certain improvements and considers that objects A and B can be implemented separately (i.e. broadening of the invention). These objects A and B are therefore claimed. The European examiner being meticulous, 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.
• Wishing also to protect object B and on the advice of the examiner, the applicant divides his application EP1 by filing a divisional application EP2 and claims object B.

Up to this point, you might say that everything is fine… and yet, as you will see, the applicant has just lost both his EP1 and EP2 applications!!!

Let us therefore analyze the claim of object A of EP1:

• The claim A is not supported by the priority P.
  • Thus, the priority of application P is not valid for this claim;
  • The effective date for claim A is then the filing date of EP1.
• Regarding the object A+B, it is disclosed by the European application EP2.
  • This object also being disclosed by the priority document;
  • The object A+B has as effective date the filing date of application P.
• Application EP2 being a European application, it can be used as a prior art document for the purpose of novelty (document A54(3) EPC)
• The object A+B being more specific than the object A, the disclosure A+B in EP2 constitutes prior art for the claim of A in EP1.

A similar reasoning can be made with the claim of object B of EP2.

Thus, as a consequence, EP1 is not new in view of EP2 and EP2 is not new in view of EP1, all because of this cursed division…

This reasoning was validated by the decision T1496/11.

The Enlarged Board of Appeal saves us

In a decision G1/15, the Enlarged Board of Appeal indicates to us:

The right to partial priority cannot be refused under the EPC for a claim encompassing alternative subject-matter by virtue of one or more generic expressions or otherwise (generic “OR”-claim) provided that the alternative subject-matter has been disclosed for the first time, directly, or at least implicitly, unambiguously and in an enabling manner in the priority document. No other substantive conditions or limitations apply in this respect.

Thus, we must follow the following reasoning (point 6.3 of the decision):

1. determine the subject-matter disclosed in the priority application and which is relevant with respect to the prior art disclosed during the priority period,
2. examine whether this subject-matter is encompassed by the claim of the application claiming priority

If this is the case, the claim is conceptually divided into two parts:

• 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 according to Article 88(3) EPC.

So, phew…