The change in Rule 36 EPC, effective from 1 April 2010, has modified when a divisional application can be filed. A good understanding of the key aspects and the available strategies can be extremely useful for the applicant when considering the filing of a divisional application. We set these out below in a few short paragraphs.
1. Identify all the subject-matter yet to be claimed.
This is the most important aspect and requires thoughtful consideration, as it may be the last chance to carry out such a review. It is of crucial importance that all the subject-matter of interest is claimed (whether through independent or dependent claims) and searched, because you cannot amend later to unsearched subject-matter (Rule 137(5) EPC).
2. Consider how many divisional applications youwish to file.
If it is clear that the unclaimed subject-matter relates to more than one invention, we recommend filing a divisional for each of these inventions by the deadline. You should treat the deadline as the last opportunity to do so.
There is a risk involved in filing claims for multiple inventions in a single divisional. Although it is possible that the Examiner may raise a new lack of unity objection and open up an opportunity for another late divisional, this should not be depended upon until EPO policy becomes clearer. Applicants should be aware that the Examiner can force withdrawal of claims on other grounds, which may mean abandonment of the remaining inventions. (In any case there is no cost advantage in attempting to delay further divisionals, as back renewal fees would need to be paid for any later divisional application.)
3. Include all possible independent claims in order of importance.
If you decide to file only a single application even where the claims encompass more than one invention, make sure that your claims set includes at least one independent claim for each invention.
Place the most important independent claim for each category (ie. product, method) as the first claim in that category. This is necessary as a precaution against Rule 62a(1) EPC, which permits the Examiner to search the first claim in each category if, after having been requested, an applicant fails to choose which claims are to be searched to the Examiner's satisfaction.
When there are several independent claims in the same category, issues will arise concerning clarity and possibly unity, but the latter can be to the applicant's advantage. If a new non-unity objection is raised then there will be an opportunity to pay additional search fees to have other inventions searched (Rule 64(1) EPC) and to then consider which group of claims should be pursued and whether there is any value in the other claims in the light of the additional search(es). Moreover (whether or not extra fees are paid) if the claims to the other inventions are not withdrawn, then the Examining Division may re-iterate any non-unity objection and, if it is the first time that non-unity objection is raised, a new clock will start for filing a new ("mandatory") divisional under Rule 36(1)(b).
4. Trim the claims to just fifteen or pay extra
In any case, select very carefully only fifteen claims. Each additional claim costs 210 Euros in excess claims fees. Try to include at least all the independent claims.
Applicants are advised to identify in good time before the deadline all the possible subject-matter to be claimed and searched. Rushing the process may result in important subject matter or claim limitations being overlooked.
Unless specifically instructed otherwise, we will file the divisional application and pay the filing, search and renewal fees at the time of filing. But we can, if requested, delay payment of the filing and search fees by one month and the renewal fees by four months (Rules 38 and 51(3) EPC).
Extra decision time and claim drafting time is available if necessary.
If by the deadline you are not sure
- whether a specific patent application needs a divisional or
- exactly what should be claimed
and you want to have time to review it after the deadline, we can file an application and establish divisional status without claims and without paying the official fees. The minimum we need to file is: (a) an indication that a patent is sought; and (b) a description or a reference to a previously filed application.
Once the date of filing is obtained, there is one month's "decision time" to decide whether to proceed with the divisional application (plus extra if you are prepared to use the further processing provisions and incur a 50% fee penalty). If you decide to proceed (thus incurring the filing and search fees of about £1,200) there are about two more months for preparing and filing the claims (Rule 58 EPC). Finally, four months after filing the description, the renewal fees need to be paid. All back renewal fees must be paid, and these can be very significant (the earlier the filing date of the parent application, the higher the fees).