Obtaining an EP Patent - A crash course for the US applicant #4

09 January, 2024

Focus: The divisional Application

If you want to protect different aspects of an invention described in an initial EP patent application, or if an Examiner has considered that your application lacks “unity” (equivalent to a restriction requirement in the US), it is likely you have been told to file a divisional application. Non unitary objections occur quite regularly for EP applications claiming a US priority because, in most situations, only one independent claim per category is allowed per European application.

The divisional application as provided by in article 76 EPC is the only continuing application offered by the EPO. It is comparable to both the continuation and the divisional application in the US. The divisional application benefits of the filing date and priority date of the parent application.

However, before going ahead and filing a multitude of divisional applications, you should be aware that the costs for doing so are much higher in Europe than they are in the US. As well as paying the same filing and search fee that you would pay for a regular application, you have to pay all of the annuities which have been paid for the parent application. This can reach quite a sum the older the parent application.

If you still decide to go ahead with filing a divisional, you must make sure that you do not add any subject matter to the divisional application. A divisional is not a continuation in part, and the contents of the divisional cannot extent beyond the content of the parent application. In practice, you should file the divisional with the same description and drawings as the parent application and a new set of claims which find a basis in the patent application.

The importance of filing new claims in your divisional and not the same claims as the parent application stems from the prohibition of double patenting. You cannot have the same claims in the divisional application as those in the parent application. The new claims can be derived from the description of the parent application.

While in the US you have until the first Office Action to file the new claims, in Europe you must submit the new claims within 2 months of filing. You will only be allowed to amend them again after reception of the search report.

If you are still undecided on whether to file a divisional, you have until the parent application is no longer pending to make up your mind. An EP application is pending until the eve of the publication of the mention of grant. If you abandon an application, it is still pending until the expiration of an unmet deadline or until the EPO received a withdrawal declaration. If an application is rejected, you have until the expiration of the deadline for appealing the rejection decision, and, if an appeal is formed, until the end of the appeal.

As an applicant considering a divisional application, what should I do?

First, you should carefully consider what specific parts of an invention you want protection for. You should draft the claims carefully, watching out for inadmissible extensions and avoiding double patenting. Then, you can go ahead and file a divisional with the same description and drawings as the parent application.

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