Divisional Practice in the BRICs and Other Countries – Part 8 of a 9-Part Series: Europe

This is Part 8 of a nine-part series examining divisional practice in the BRIC as well as several non-BRIC countries. To view Part 1 (Divisional Practice in Mexico), click here. To view Part 2 (Divisional Practice in Brazil), click here. To view Part 3 (Divisional Practice in the United States), click here. To view Part 4 (Divisional Practice in India), click here. To view Part 5 (Divisional Practice in Russia), click here. To view Part 6 (Divisional Practice in China), click here. To view Part 7 (Divisional Practice in Canada), click here.

Divisional Practice in Europe

Time Periods for filing a Divisional Application

For European patent applications, a divisional application must be filed while a parent application is pending.  In other words, a parent application cannot be granted, definitively refused or definitively withdrawn. A patent application is still considered to be pending:

1.  Until expiry of the deadline for filing an appeal (even if an appeal is not subsequently filed), when the Examining Division has refused a parent application; and

2.  While a patent application is involved in an appeal against a refusal by the Examining Division.

In April 2010, Rule 36 European Patent Convention (EPC) was amended to set strict deadlines for filing divisional applications. Two different scenarios for filing divisional applications were permitted depending on whether a divisional application was a voluntary or mandatory application. Under Rule 36(1)(a), an Applicant could file as many “voluntary” divisional applications as it liked provided that such applications were filed 24 months from the first communication from the Examination Division issued in a parent application. When an application was part of a chain of European parent and divisional applications (for example, when a parent application was itself a divisional application), the two year period began from the date of the first Examining Division communication issued in the earliest application in the chain of applications. Under Rule 36(1)(b), an Applicant could file a “mandatory” divisional application 24 months from the date of an Examining Division  communication containing an objection to the claims as lacking unity, provided such objection was being raised for the first time in the chain of applications of the same family. However, beginning April 1, 2014, this amendment to Rule 36 will be repealed. Therefore, as of April 1st, all that will be required is that a divisional application be filed while a parent application is pending.

Requirements for Filing a Divisional Application

According to Rule 40 EPC, when filing a divisional, the following must be supplied:

1.  A written statement that a European patent is being sought;

2.  Information identifying the Applicant or allowing the Applicant to be contacted; and

3.  A description or reference to a previously filed application (A reference to a previously filed application must state the filing date and the number of the application and the Office in which it was filed. Such reference must indicate that it replaces the description and any drawings).

When an application contains a reference to a previously filed application, a certified copy of the previously filed application must be filed within two months of the filing of the divisional application, unless the reference application was originally filed with the European Patent Office (EPO). If the previously filed application is not in an official language of the EPO (namely, in English, French or German), a translation into one of the official languages will be required within two months of the filing of the divisional application.

The filing and search fee for a divisional application must be paid within one month after filing. The designation fee must be paid within six months of the date on which the European Patent Bulletin mentions the publication of the European search report for the divisional application.

Claims of a Divisional Application

A divisional application may be filed with or without any claims. If a divisional application is filed without any claims, the EPO will set a two month period for the Applicant to provide a set of claims. Alternatively, a divisional application may be filed with the claims as originally filed in the parent or PCT application. However, the claims of a divisional application filed with the same claims of a parent or PCT application will need to be amended at some point during prosecution to ensure that neither the parent or divisional application claim the exact same subject matter from one another.

Double Patenting

The EPC does not explicitly contain any specific provisions prohibiting double patenting (namely, the case of co-pending European patent applications having the same filing date, filed by the same Applicant and claiming the same subject matter). However, the Guidelines for Examination in the EPO (Guidelines) in Section G-IV-5.4 state that “it is an accepted principle in most patent systems that two patents cannot be granted to the same application for one invention.” In fact, the Enlarged Board of Appeal (Board) in decisions G 1/05 and G 1/06 accepted a prohibition on double patenting. The reasoning the Board gave is that an Applicant does not have a “legitimate” interest in proceedings leading to the grant of a second patent for the same subject matter if the Applicant already possesses a granted patent for that same subject matter. According to the Board, it is permissible to allow an Applicant to proceed with two applications having the same description provided that the claims are distinct in scope and directed to different inventions.

In view thereof, substantial overlap between claims has been permitted by the EPO. For example, if claims to a narrow genus are obtained in a first application (such as a parent application), the EPO is likely to allow claims to a broader genus that encompasses the species in a divisional  application. Specifically, the Guidelines in Section G-IV-5.4 state that:

“…in the rare case in which there are two or more European applications from the same applicant definitively designating the same State or States (by confirming the designation through payment of the relevant designation fee) and the claims of those applications have the same filing or priority date and relate to the same invention, the applicant should be told that he must either amend one or more of the applications in such a manner that the subject matter of the claims of the applications is not identical, or choose which one of those applications he wishes to proceed to grant. If he does not do so, once one of the applications is granted, the other(s) will be refused under Art. 97(2) in conjunction with Art. 125. If the claims of those applications are merely partially overlapping, no objection should be raised (see T 877/06). Should two applications of the same effective date be received from two different applicants, each must be allowed to proceed as though the other did not exist” (emphasis added).

Therefore, practically speaking, an Applicant is unlikely to receive a double patenting objection by an Examiner in a divisional application provided that the Applicant can show that the claims in the divisional application do not contain the identical scope of the parent application.

Examination of Divisional Applications

A divisional application is treated as a separate application and is accorded a separate application number, requires separate fees, requires a separate request for examination, will be prosecuted separately from the parent application, and will result in an independent patent from the parent application. The fees for a divisional application are the same as for any parent application. The term of patent for a divisional application is twenty years from the filing date of the very first parent application.

Poisonous Priorities – The Problem of Toxic Divisional Applications

One very unique aspect about divisional practice in Europe involves the “self-collision” between parent and divisional applications that arises as a result of Article 54(3) EPC. Article 54(3) makes no distinction between earlier application filings of “others” or by the same inventor. Specifically, Article 54 EPC states:

1.  An invention shall be considered to be new if it does not form part of the state of the art.

2.  The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.

3.  Additionally, the content of European patent applications as filed, the dates of filing of which are prior to the date referred to in paragraph 2 and which were published on or after that date, shall be considered as comprised in the state of the art (which is often referred to as a “whole contents” anticipation).

4.  Paragraphs 2 and 3 shall not exclude the patentability of any substance or composition, comprised in the state of the art, for use in a method referred to in Article 53(c), provided that its use for any such method is not comprised in the state of the art.

5.  Paragraphs 2 and 3 shall also not exclude the patentability of any substance or composition referred to in paragraph 4 for any specific use in a method referred to in Article 53(c), provided that such use is not comprised in the state of the art” (emphasis added).

Thus, under Article 54(3) EPC, the claims of a published divisional child patent application can anticipate or destroy the novelty (but not the inventive step) of the claims of a published pending or granted parent application or the claims of a published parent application can anticipate or destroy the novelty of the claims of a published pending or granted divisional child patent application. Such a scenario is often referred to as a “toxic” divisional or “poisonous” priority scenario.

When do such toxic divisionals or poisonous priority scenarios arise? Typically, problems involving toxic divisionals and poisonous priorities arise when both the parent and divisional application claim priority to the same earlier filed application (such as under the Paris Convention) but one or more of the claims in parent or divisional application is determined not to be entitled to priority to the earlier filed application. The following example illustrates the problem.

1.  On January 1, 2011, Applicant files a patent application in the EPO (priority application). The application describes and claims five compounds.

2.  On December 28, 2012, the Applicant files a second patent application in the EPO claiming priority to the application filed on January 1, 2011 (parent application). The parent application includes additional subject matter, including a description of a broad genus which encompasses the five species described and claimed in the priority application. The claims of the parent application are directed to the broad genus. The parent application is published by the EPO.

3.  On June 28, 2013, Applicant files a divisional application claiming the five species that were claimed in the priority application. The divisional application is published by the EPO.

In this scenario, the claims of the divisional application are likely entitled to the priority date of January 1, 2011. The claims of the parent application are likely not entitled to the priority date of January 1, 2011. Therefore, the subject matter of the claims of the divisional application can be used to destroy the novelty of the claims of the parent application (namely, a species anticipating a genus). The result would not change if the parent application had already issued into a patent. Moreover, the result would not change if the parent application claimed the species (and hence was entitled to priority) and the divisional application claimed the broad genus.

In view of the risks associated with toxic divisionals or poisonous priorities, Applicants should take care when deciding whether or not to file a divisional application and if so, with what claims. Once parent and divisional applications are published or granted, Applicants should take great care to avoid novelty attacks. Applicants should be particularly vigilant to ensure at the claims of a published parent or divisional application do not create novelty problems for the claims of a previously granted divisional or parent application. Such novelty problems could arise in a later filed opposition or subsequent litigation.

Other Important Information Regarding Divisional Applications

Unlike other jurisdictions where divisional applications can only be filed when a lack of unity objection is raised by the relevant Office, European divisionals can be filed at any time (namely, before receipt of the Search Report or issuance of any communication from the Examining Division).

Furthermore, unlike other jurisdictions where divisional applications can only be filed with claims directed to an invention other than the 1st invention identified by the relevant Office, European divisional applications can be filed (subject to the above considerations on double patenting) with claims directed to any subject matter, provided that the subject matter is literally supported by both the European divisional application as originally filed and the parent application(s) as originally filed. In particular, divisional applications can be filed with claims directed to subject matter only disclosed in the description and/or drawings of the parent application even where the claims of the parent application were never directed to such subject matter.

This post was written by Lisa Mueller and Micaela Modiano of Modiano & Partners.

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