This week, over protests from European patent practitioners, the EPO decided to add new limitations on when a divisional application may be filed, beginning next April. Of late, the EPO has become increasingly hostile towards what it regards as “abusive” filing of divisionals—practices such as repeatedly re-filing a divisional patent applications to avoid the effects of a rejection, or filing a divisional before an allowed application issues to pursue broader claims than were allowed.

To address these “abusive” practices, as of April 2010, the EPO will require that a divisional application be filed either:

  • within two years of the first communication from the Examining Division regarding the earliest application in a family; or
  • within two years of any objection from the Examining Division regarding a lack of unity of invention for any application within the family.

In Europe, a divisional application is the only allowed form of “continuing” application,  so the new rules will force patent applicants to identify discrete patentable inventions disclosed within their specification somewhat earlier than the current rules allow. The new rules may also make it difficult for patent applicants to spread out prosecution costs in Europe.

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