According to Rule 36(1)(b) EPC a divisional application can be filed before the expiry of a time limit of twenty-four months from any communi-cation in which the Examining Division has objected that the earlier application does not meet the requirements of Article 82 EPC (unity of the invention), provided it has been raising that specific objection for the first time.
The case is considered here that the twenty-four term according to Rule 36(1)(a) EPC for the earliest application has already been lapsed, and that non-unity of the invention is stated in the search report of a divisional application derived from the earliest application. The communication pursuant to Rule 62(1) EPC will not trigger the term of Rule 36(1)(b) EPC, because it is not a communication from the Examining Division, the Examining division not yet being responsible for the application.
If the applicant thereafter amends the divisional application in the response to the communication pursuant to Rule 69 EPC by deleting one or more further claimed inventions in order to establish unity of the invention, the following first communication from the Examining Division will not object non-unity, because unity had already been established. Thus, in the worst case, the applicant will have no chance to file another divisional application, because the condition of Rule 36(1)(b) EPC will not be met.
In order to avoid such an unwanted situation, the applicant has the following possible options: ... read more