Date: 1 February 2023
Applicants may soon find themselves with less time for filing and prosecuting divisional patent applications at the UKIPO.
Patent applications in the UK are subject to a compliance period that sets a sunset date by which time the application must be in order for grant. The compliance period expires 4.5 years from the priority/filing date, or 12 months from issuance of the first examination report, if later. The compliance period can be extended by 2 months as of right, with further discretionary extensions available in certain circumstances, on payment of fees.
Current UK practice is that divisional applications inherit the compliance period of the parent as extended. As a result, and because a divisional application must be filed at least 3 months before the expiry of the compliance period of the parent application, extending the compliance period of the parent application to allow for late filing of the divisional had the added effect of extending the compliance period for the divisional application. The UKIPO has concluded that this practice “…is inconsistent with a proper construction of the relevant legislation”.
Accordingly, from 1 May 2023, divisional applications will inherit the un-extended compliance period of the parent.
In practice, the main effect of the change is that applicants may have less time to complete prosecution of a divisional application, within the original compliance period of the parent application. In other words, it may be necessary to pay additional extension fees, especially for late-filed divisional applications. These could mount up, for example, for “cascaded” multiple divisional applications. It could be regarded as an attempt by the UKIPO to encourage early filing of divisional applications. As a general rule this is in any case advisable, although not always possible.
This change of practice will have no impact on applications already granted or on divisional applications filed on or before Friday 28th April 2023. There is no change where the compliance period of the parent application has not been extended.
Extensions to the compliance period of both parent and divisional applications will continue to be available under r.108 Patents Act 1977 in the normal way. For more info visit the UKIPO website: here
If you have any questions about divisional applications in the UK, or any other aspect of patenting, don’t hesitate to get in touch for a chat with one of our many experienced attorneys.