The European Patent Office (EPO) recently issued a follow-up to decision J 9/10 which we already reported in our news release on 18 Oct, 2012. This decision J 9/10 is now considered by the EPO to have particular influence on the already difficult to monitor deadlines for filing divisional patent applications under the European Patent Convention (EPC).
Specifically, under Rule 36(1)(a) EPC, the period for "voluntary" division is triggered by the examining division's first communication under Article 94(3) EPC or under Rule 71(3) EPC in respect of the earliest application for which a communication has been issued. This communication also triggers the period for "mandatory" division under Rule 36(1)(b) EPC if it raises a specific objection of lack of unity for the first time. According to the EPO, decision J 9/10 casts doubt on the validity of a communication of the examining division issued automatically on EPO Form 2001A. Therefore, the EPO's receiving section will no longer regard a communication issued on EPO Form 2001A as the communication triggering the relevant period when examining whether a divisional application has been filed in good time.
This means that the period under Rule 36(1)(a) EPC will begin, irrespective(!) of any communication on EPO Form 2001A, on notification of the examining division's first subsequent communication under Article 94(3) EPC or under Rule 71(3) EPC. This practice will certainly make monitoring the relevant deadlines even more complicated. The EPO further advises that the information in the European Patent Register on the communication relevant for calculation of the time limit under Rule 36(1)(a) EPC - when referring to a communication issued on EPO Form 2001A - is now inaccurate.