Compliance periods on divisional applications

On 3 January 2023, the IPO published details on changes to its practice involving divisional applications that will come into force in May 2023. See full details at www.gov.uk/government/publications/compliance-periods-on-divisional-applications

This year the Intellectual Property Office (‘IPO’) will change how it accords divisional applications during their compliance period. This notice sets out this practice change. The IPO has also provided a dozen questions and answers to help users understand what this change means in practice.

Introduction

From Monday 1 May 2023, the IPO will no longer accord divisional applications a compliance period equal to the compliance period of the parent application as extended under rule 108(2)/rule 108(3) of the Patents Rules 2007 (as amended). Instead, the divisional application will be accorded a compliance period which is equal to the original and unextended compliance period of the parent application as defined by rule 30(2).

Background

The IPO has concluded that its previous practice of according applications filed under section 15(9) of the Patents Act 1977 (as amended), ‘divisional’ applications, the same compliance period as the earlier application, the ‘parent’ application, where the compliance period of that parent application has been extended in accordance with rule 108(2) or rule 108(3) of the Patents Rules 2007 (as amended), is inconsistent with a proper construction of the relevant legislation. In accordance with rule 30(3)(b) of the Patents Rules 2007 (as amended), from Monday 1 May 2023 , the IPO will attribute to a divisional application filed on that date or after, a compliance period of:

• four years and six months beginning immediately after –

• where there is no declared priority date, the date of filing of the application, or

(ii) where there is a declared priority date, that date; or

• if it expires later, the period of 12 months beginning immediately after the date on which the first substantive examination report is sent to the applicant, in relation to the earlier parent application

This change in practice will mean that the IPO will no longer treat the compliance period of the earlier parent application that has been extended under rule 108(2)/ rule 108(3) as the unextended compliance period of the divisional application. Extensions to the compliance period of both parent and divisional applications will continue to be available under rule 108 in the normal way.

Impact and timing of these changes

This change of practice will have no impact on applications already granted. This change of practice will also have no impact on divisional applications filed on or before Friday 28 April 2023 , these will still be accorded a compliance period according to existing practice as currently set out at 15.20.1 in the Manual of Patent Practice. Thereafter, divisional applications will be subject to the new practice detailed in this notice.

Applicants and their representatives should carefully consider any impact this modified practice will have on the time available for them to file and prosecute divisional applications to grant, particularly where those divisional applications are filed close to the end of the compliance period of the parent application. Under the revised practice applicants and their representatives may find that there is less time remaining to file and prosecute new divisional applications than they are accustomed to.

The IPO will use the time between publication of this notice and implementation of the new practice on 1 May 2023 to engage with stakeholders. A set of questions and answers are set out below to help understand what this change in practice means. The Manual of Patent Practice and the Patents Formalities Manual will be updated to reflect this practice change in due course.

Enquiries

Any general enquiries about this notice should be made to: Dr Jamie M. Frost, Registered Rights Legal and Practice Team, IPO, Concept House, Cardiff Road, Newport, South Wales, NP10 8QQ; ore telephone 01633 814463.

If you would like to discuss a particular application, please contact the examiner handling your case. Contact details for the examiner can be found on the cover letter accompanying the latest search or examination report, or on the report itself.

Julyan Elbro, Divisional Director, Patent Examination, IPO, 3 January 2023

Questions and answers on compliance periods on divisional applications

1. What is the impact of this practice change on applicants?

Under the new practice all divisional applications will be accorded the unextended compliance period of their original parent application. Applicants will therefore need to carefully consider the timing of the filing of divisional applications as well as the potential need to extend the compliance period of the resulting divisional application to enable it to be prosecuted.

Under this new practice the latest that an applicant will be able to file a divisional application without relying on discretionary extensions of time under rule 108 to satisfy rule 19(2)(b), is one month before the expiry of the unextended compliance date of the parent application.

Under this new practice the latest that an applicant will be able to file a divisional application when relying on discretionary extensions of time under rule 108 to satisfy rule 19(2)(b), is two months after the expiry of the unextended compliance date of the parent application. Discretionary extensions of time to enable the filing of divisional applications will only generally be awarded if an applicant can show that the circumstances are exceptional and that they have been properly diligent.

2. If the compliance period of a parent application is extended by the Comptroller following a request under rule 108(2)/rule 108(3), what compliance period will the divisional application take?

Under the IPO’s revised practice the compliance period of a divisional application will be calculated according to rule 30(2), that is, with respect to the relevant dates linked to the parent application. In other words the divisional application will, in effect, inherit the original and unextended compliance period of the parent application.

3. Am I still able to request extensions to the section 20 date of a divisional application?

Yes, there is no change in practice in this regard. The new practice just means that the compliance period as extended by rule 108(2)/(3) will not be passed down to any subsequent divisional applications derived from that application.

4. Is it still possible to file a divisional application late i.e. with less than three months remaining of the compliance period on the parent application?

Yes, there is no change in practice in this regard although as discussed above the timelines involved in doing this will change. The rule 19(2)(b) requirement can still be satisfied by either (a) extending the compliance period of the parent application under rule 108(2)/rule 108(3) and/or (b) requesting an extension to the rule 19 period under rule 108(1). Discretion to extend these time periods for the purposes of allowing the filing of a divisional application will only normally be exercised if the applicant has shown that the circumstances are exceptional and that they have been properly diligent. There is no change in this aspect of our practice and this topic is discussed at 15.21 of the Manual of Patent Practice

5. What is the latest point at which I will be able to file a divisional application?

The latest point at which you will be able to file a divisional is the end of the period of two months beginning immediately after the compliance date of the parent application expired. This is due to rule 108(7), which states that the compliance date cannot be extended if the extension is not requested before the end of the aforementioned period.

6. Will I be able to file a divisional application on or before Friday 28 April 2023 that is accorded a compliance date under the old practice, and then file a further divisional application from that divisional application on or after Monday 1 May 2023?

This may or may not be possible depending on your circumstances. As divisional applications will no longer be inheriting the extended compliance date of their parent, in addition to satisfying the requirements of rule 19 applicants will also have to ensure that the compliance period of any divisional application is either current or capable of extension under rule 108(2)/(3) at the date of filing.

It is possible that a small number of applicants who are accustomed to the current practice will have divisional applications with compliance dates that are significantly past the compliance date of the original parent application on Monday 1 May 2023. Such applicants may find that they are unable to file a further divisional application as they will be unable to extend the compliance date of the new divisional application sufficiently under the new practice. This is because rule 108(7) prevents any extension being granted to the compliance period after the end of the period of two months beginning immediately after it has expired. The period between publication of this notice and implementation of the new practice on Monday 1 May 2023, is designed to act as a transitional period to allow applicants to note this change in practice and adjust their future filing strategies accordingly.

7. If I had to request one or more extensions of time to the compliance period of an application in order to file a late divisional application, will I also need to request equivalent extensions of time on the divisional application at the time of filing?

It will generally be necessary and expected to request the same extensions of time for the divisional application as were requested on the parent application, in order to enable the divisional application to be filed and to provide sufficient time for the divisional application to be prosecuted. Where the requests for extensions to the compliance date of the parent application have been allowed, it is expected that the equivalent extensions on the divisional application will generally also be allowed.

8. Will it still be possible to file sequential divisional applications?

It will still be possible to file sequential divisional applications (i.e. one divisional application off another divisional application) provided that the requirements of the Patents Act 1977 (as amended) and Patents Rules 2007 (as amended) are met. However, all such divisional applications will have the