A recurring theme on this blog is the topic of divisional applications in Israel, specifically the impropriety of the Israel PTO’s decision a few years ago to limit the time frame for the filing of divisionals. A quick recap: the Israel patent statute allows applicants to divide an application as long notice of the allowance of the application hasn’t been published. Hence if I have application A, at any time before the ILPTO publishes notice of its acceptance I may file divisional application B. I may then file divisional application C at any time before the ILPTO publishes notice of the acceptance of application B. And so on. The end result is that I can keep an application pending for the entire 20-year term of the original application A, in the same way that continuation practice in the USA can be used to achieve the same result.
For over 40 years following the enactment of the statute in 1967, the ILPTO followed the statute. And then, sua sponte (or maybe at the behest of someone, like a lobbyist for an industry with a strong patent antipathy), the Commissioner decided that the ability of applicants to keep application pending in perpetuity was bad policy. So he unilaterally announced that neither his predecessors as Commissioner nor the courts that had adjudicated divisionals of divisionals understood the statute, and that the statute only allows the filing of progeny applications from application A prior to the publication of the allowance of A. Hence C, a divisional of B which is a divisional of A, can only be filed before notice of the allowance of A is published.
Lest one think that the filing of late-stage divisionals might be possible in response to a lack-of-unity finding in an earlier divisional application, the ILPTO published a clarification stating that the limitation on the timing of the filing of divisionals applies even if the ILPTO makes a finding of disunity in application B: if publication of the allowance of the parent application A has already taken place, then the applicant has to choose which inventions to continue to prosecute and which to give up on, because the ILPTO won’t allow the applicant to file a divisional of application B.
To date, it appears no applicant has challenged the ILPTO’s illegal adoption of this policy.
I mention all this – again – because the EPO recently announced that it is retreating from its similarly ill-advised foray into limiting the window for the filing of divisionals. Once upon a time, an applicant could file divisional applications in Europe ad infinitum, irrespective of the status of the ancestral cases. Then it changed its tune, and said that a divisional application must be filed from a pending patent application by the later of two years from the issuance of a first Examination Report for a related family, or two years from the issuance of a new lack of unity objection. As noted by our colleagues at Harrison IP, “The two year period was initially introduced by the EPO to counteract a perceived abuse of filing long series of divisionals to cause uncertainty to third parties.”
Now the EPO has announced that is changing tack once again: effective April 1, 2014, EPC Rule 36 will change so that the only criterion for the filing of a divisional application is that it be a divisional of a pending European patent application. In order to dissuade the “evergreening” of applications by the serial filing of divisionals, the EPO is simultaneously introducing a progressive fee scale for filing divisional patent applications. A divisional patent application filed from an original European patent application will only be subject to the regular filing fee (and of course the retroactive payment of the EPO’s egregious renewal fees, but we’ll leave that topic for another day). But a divisional patent application filed from a prior divisional patent application (i.e. a divisional-of-a-divisional) will incur an additional fee (via an amendment to Rule 38 EPC). This additional fee will increase in accordance with the generation of the divisional application. Thus a second generation divisional would cost less to file than a third generation divisional and so on. The actual fees to be charged have yet to be announced; like the permissive policy regarding the timing of the filing divisionals, these additional fees will take apply to divisional patent applications filed on or after April 1, 2014.
Will the ILPTO follow suit? No predictions here, but it would be well-advised to do so. Its current untenable position flat-out contradicts the statute and is therefore ultra vires; someday the ILPTO’s position is going to be challenged, and the ILPTO is going to be slapped down by the courts. If the unelected and unaccountable higher-ups in the ILPTO erroneously think that policy-making is part of their job, then they can try to impose their will via fee setting, just as the EPO has now done. Fee-setting is done legally via rulemaking, with the Justice Minister promulgating the rules, subject to approval from the Knesset Statute, Constitution and Law Committee. Given the particular personalities currently involved, it’s not clear that such an attempt at rule making would be successful, if it were to even gain any traction at all. But that’s how things work in democracies, even that of the People’s Free Democratic Republic of Israel.