Rule 36 EPC was amended in 2010 to introduce 24 month time limits for filing divisional European patent applications from a parent European patent application. One purpose of the rule amendment was to address the issue of precautionary divisional filings that were filed to avoid adverse decisions.

An online consultation, with a closing date of 5 April 2013, recently popped up on the EPO’s website (here) announcing that the EPO is going to take another look at Rule 36 EPC and the time limits for filing divisional applications.

Rule 36 EPC currently means that, with some limited exceptions, an applicant has to file any divisional applications they want within 24 months of the first examination report issuing. Given that it can often take over a year to get a further communication from the Examiner following the applicant’s response to the first examination report, this time period can mean that an applicant is forced to decide on whether to file a divisional application before they know what the examiner thinks of their earlier arguments. This is obviously not an ideal situation for an applicant!

In a slightly ironic turn of events it seems, from the EPO’s own consultation announcement, that the number of divisional applications has actually gone up since the rule was amended!

The consultation asks for feedback and assessment on Rule 36 EPC and asks if it could be improved in any way (yes!). One suggestion presented within the consultation itself is the possibility of extending the time period from 24 months to either 48 or 60 months from the first exam report.

So, if you’ve ever taken issue with Rule 36 EPC, now is your time to tell the EPO what you think. Don’t delay, the consultation is only open for a few weeks.

Mark Richardson      11 March 2013