Europe Puts the Brake on Continuation Practices

Proposals have been circulating before the United States Congress regarding changes to the US code to restrict continuation practices for US patent applications. In Europe, the term "continuation application" does not exist. Nevertheless, it is customary for applicants to file divisional applications and ‘divisionals of divisionals’in order to extract the last benefits from their applications and to prolong pendency.

In combined cases T020/02 and T0797/02 (23 September 2004), the EPO Board of Appeal issued controversial decisions regarding such divisional practices. Their underlying reasoning was that divisional applications filed from divisional applications (i.e. second and further generation divisionals) are to be treated differently to divisional applications filed from an original parent application (i.e. first-generation divisionals).