OJ EPO 2009, 486
1. Since the revised European Patent Convention entered into force on 13 December 2007 it has been possible to file a patent application by reference to one filed previously (Rule 40(1)(c) EPC). This also applies to divisional applications (Rule 36 EPC) which refer to their parent application.
2. Applicants filing such (divisional) applications are released from their obligation to file a certified copy of the previous application within two months (Rule 40(3) EPC), provided the latter was a European application[ 1 ] or an international one filed with the EPO as receiving office under the Patent Cooperation Treaty (PCT).
3. In all other cases, notwithstanding the Guidelines for Examination in the EPO as currently worded (A-II, 188.8.131.52, A-IV, 1.3.1), they must file a certified copy of the earlier application – i.e. the original application to which reference is made – within the time limit under Rule 40(3) EPC. This means that for a divisional application referring to an international application which has entered the European phase (Euro-PCT application) and was not filed with the EPO as receiving office, they must file a certified copy of the international (PCT) application originally filed with the receiving office.
4. The earlier application must be translated into an EPO official language if necessary. No translation need be filed if the EPO already has a translation of the original application, because in such cases it puts a copy on file free of charge (Rule 40(3) EPC).
5. If the applicant fails to file a certified copy of the earlier application in due time (Rules 40(3) and 55 EPC), the (divisional) application is not dealt with as a European patent application (Article 90(2) EPC). Within two months from notification of the communication noting such a loss of rights, the applicant may request a decision (Rule 112(2) EPC).
[ 1 ] Including European applications which were themselves divided out of an earlier application.
Date retrieved: 19 May 2021