Abolition Of Time Limit Allows For More Flexible Patent Strategy


From April, there will be more freedom in working with divisional patent applications in Europe as the abolition of the 24 month time-limit in EPO's Rule 36 enters into force. Tom Ekeberg, European Patent Attorney at Zacco, explains the effects of this change.

First of all, what is a divisional application and what are the reasons for filing divisionals?

- A divisional application is a patent application filed with the same description as an already filed patent application, but with the patent claims directed towards a different invention. The reasons for filing a divisional application may be that you discover that your application contains more than one invention, or if you find out that what you really wanted to protect cannot be protected. Also, if the Examiner is willing to grant a much narrower patent than you feel that you are entitled to, you can accept the narrow patent and file a divisional application to give the wider scope of protection a second try.

The 24 month time-limit for filing a divisional application was introduced in 2010. What was its purpose?

- There are several reasons for restricting possibilities of filing divisional applications. If it is too easy applicants may file divisionals, just to have something pending. This adds to the workload of the patent office and also increases the burden of monitoring the patent landscape for third parties.

Why did EPO decide to abolish the time-limit?

- Because it has been very unpopular among practitioners and applicants. The time limit of 24 months seemed very arbitrary - you may have valid reasons for wanting to protect an invention that you did describe but not claim initially, also after 24 months have passed. Also, it added to...

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