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Updated with EPO confirmation & proposed amendments
As noted earlier on IPcopy, Rule 36 EPC, which was amended in 2010 to introduce 24 month time limits for filing divisional European patent applications from a parent European patent application, was made the subject of an EPO consultation. The consultation closed on 5 April 2013 but the EPO website has not yet been updated with any details of the responses received.
However, a number of sources (1, 2, 3) are now reporting that Rule 36 is to be amended from 1 April 2014 such that the 24 month deadline rule is removed and the procedure reverts back to the pre-April 2010 arrangements. So far there has been no official announcement from the EPO.
As well as reverting to the old version of Rule 36 EPC it is being suggested that there will be additional fees for 2nd Generation divisional applications. No firm indications have been received as to the level of such fees but it has been suggested that the fees will be relatively modest, particularly when factoring in the amount of renewal fees that would be payable on such a case!
More news as it appears. Hopefully the EPO will open up about the proposals sooner rather than later and it’s disappointing that there’s been no update to the consultations page on the EPO website.
Those applicants having European patent applications that are outside of the 24 month divisional period may wish to explore the possibility of keeping their applications pending until 1 April 2014 to see if they can take advantage of the new rules when they come into force.
Update: well that was quick! The EPO website is now carrying confirmation of the above. The EPO statement reads:
Revision of the requirements for the filing of divisional applications (amendment of Rules 36, 38, and 135 EPC)
18 October 2013
The Administrative Council has adopted in its meeting of October an amendment of the provisions of the European Patent Convention dealing with the requirements for the filing of divisional applications, namely Rules 36, 38, and 135.
The decision enters into force on 1. April 2014 and will apply to divisional applications filed on or after that date. It enables the filing of divisional applications as long as the earlier (parent) application is pending. The 24-month time limits for the filing of divisional applications are repealed.
In addition, there will be an additional fee as part of the filing fee for divisional applications of second or subsequent generation. This means that the filing of divisional applications in respect of earlier divisional applications will be subject to an additional fee. The amounts of this fee grow progressively with each subsequent generation of divisional applications up to a certain level, becoming then a flat fee.
Update 2: the European Patent Institute (EPI) were present at the Administrative Council meeting where the rule 36 rule changes were discussed. The attached document contains the proposed amendments to Rules 36, 38 and 135. The proposed amendments are detailed below. The EPI also note that “The required amendment of the Rules relating to Fees will be discussed on the Budget and Finance Committee and is, therefore, not a subject of the present document.”
Proposed amendments
1. Rule 36(1) shall read as follows:
“(1) The applicant may file a divisional application relating to any pending earlier European patent application.”
2. The following paragraph 4 shall be added to Rule 38:
“(4) The Rules relating to Fees may provide for an additional fee as part of the filing fee in the case of a divisional application filed in respect of any earlier application which is itself a divisional application.”
3. Rule 135(2) shall read as follows:
“(2) Further processing shall be ruled out in respect of the periods referred to in Article 121, paragraph 4, and of the periods under Rule 6, paragraph 1, Rule 16, paragraph 1(a), Rule 31, paragraph 2, Rule 36, paragraph 2, Rule 40, paragraph 3, Rule 51, paragraphs 2 to 5, Rule 52, paragraphs 2 and 3, Rules 55, 56, 58, 59, 62a, 63, 64 and Rule 112, paragraph 2.”
Mark Richardson 18 October 2013
IPcopy 
Do you think the fees will be relatively modest? If they grow progressively with each generation, they could become quite high for multiple divisionals? There still seems to be concern in some quarters about “evergreening” and this might be a way to penalise it?
New Rule 38(4) EPC as I read it does not make any distinction in terms of the generation of the divisional, except that it does not apply to divisional applications of the first generation and only applies to divisional applications “filed in respect of any earlier application which is itself a divisional application” (i.e. from the 2nd-generation divisional applications onwards). I would therefore expect the additional fee to be the same irrespective of the generation, especially since new Rule 38(4) EPC uses the singular form “an additional fee”. I don’t believe that the Rules relating to Fees could provide otherwise. This contrasts for instance with the provisions of Article 86 EPC and Rule 51 EPC which use the plural forms in respect of the “renewal fees” due in respect of European patent applications. This is debatable though.
In any event, this news is just fantastic. It’s however quite shameful that Applicants had to bear for four long years the financial consequences of badly-thought amendments to Rule 36 EPC. These corrective measures have taken too long IMHO.
Well, having given further thoughts to this issue, nothing would formally prevent the definition of progressive amounts depending on the generation of the divisional.
The idea that the fees may be relatively modest came from a post on Patent Docs – http://www.patentdocs.org/2013/10/news-from-abroad-epo-to-rescind-deadline-for-filing-divisional-patent-applications.html
Not sure how much of this is guesswork at the current time though.
The back renewal fees are always the real sucker punch though when filing a divisional. If an EP application has made it to year 6 then filing a divisional at that point attracts renewal fees of nearly 3000 Euros! Get to year 8 and you’ve cleared 5000 Euros.