We recently received word from the European Patent Office and our colleagues at Forresters and ZBM Patents and Trademarks that the European Patent Office will bring its divisional patent practice back into line with the US and most of the rest of the world by allowing divisional applications to be filed from any pending European patent application at any time. The current rule had set the time limit for the filing of divisional applications as 24 months from the first communication from the examining division for the earliest filed European patent application in the family. The change will take effect for filing divisional applications from any European patent application pending on 01 April 2014.
This is welcome news to patent practitioners, as the rules in effect until 01 April 2014 force applicants for European patents to decide to file a divisional application very early in the patent application process. This was often before one would know what the likely claim scope for the first filed European patent application in a family might be. However, all is not roses for patent practitioners. As helpfully pointed out by our colleagues at ZBM Patents and Trademarks, the ability to file past the currently in-force 24 month deadline could impact freedom-to-operate opinions based upon this earlier deadline. In addition, later filed divisional applications can, in some cases, invalidate their parent patent applications, as summarized in another post.