The European Patent Office (EPO) has recently repealed provisions of the European Patent Convention which limit the time for voluntarily filing a Divisional patent application to 24-months from issuance of a first communication from the Examining Division.
Under the new rules which are to take effect from 1 April 2014, a Divisional application may be voluntarily filed at any time whilst the parent patent application is still pending. As such, the new rules will be applicable to any Divisional patent applications that are filed on or after the 1 April 2014 irrespective of whether the 24-month limit has expired as long as the parent patent application is still pending.
As Hong Kong Standard Patents (i.e. a 20-year patent) are able to be recorded in Hong Kong based upon European Patents (which designate the United Kingdom), it is envisaged that this change in European Divisional patent application filing practice may generally provide greater flexibility for patentees to pursue patent protection in Hong Kong for inventions in certain circumstances, should the need arise. Conversely, parties concerned with “freedom-to-operate” in Hong Kong will need to take into consideration the increased risks of potential patent infringement ultimately arising in Hong Kong by virtue of this change in European Divisional patent practice.
The official notice published by the EPO is available online here.