IPO Manual of Patent Practice update

On 1 January 2023, the main changes listed below were incorporated into the latest version of the Manual of Patent Practice. The updated table of changes can be viewed on the gov.uk website, see www.gov.uk/guidance/manual-of-patent-practice-mopp.

same compliance period as that initially accorded to the original parent application under rule 30(2).

9. If the unextended compliance period of a parent or divisional application expires imminently, what timeframes apply for the filing of relevant forms and fees needed to progress the application?

There is no change in practice in this regard. A request for substantive examination (Form 10) must be filed by the later of (a) two months after filing the new application or (b) two years from the declared priority date, or, where there is no declared priority date, two years from the date to be treated as the filing date. This time limit may be extended in accordance with rule 108. However, as with a search request (Form 9), if the divisional application is initiated within the last six months of the compliance period (including any extensions) then the period for filing the Form 10 and fee expires on the date on which the divisional application is initiated. In this case, the period may be extended in accordance with rule 108.

10. How soon can I expect my divisional application to be searched and examined?

The IPO will endeavour to conduct search and examination of your divisional application as soon as reasonably possible taking into account existing workloads and priorities. You may find it is necessary to extend the compliance period to provide sufficient time to consider and respond to the examiner’s report.

11. What happens if the examiner has no objections to my divisional application, but it is A-published after the expiry of the compliance period?

Assuming no further objections arise as a result of the examiner completing their investigations, your application will be granted at the earliest opportunity following A-publication.

12. How can I help the IPO process my divisional application quickly?

Where a divisional application is filed close to the end of the compliance period of the corresponding parent application, please mark all correspondence as ‘URGENT’. Also, if your claimed invention incorporates matter from the description, not previously claimed, you can assist us by outlining where support for that newly claimed matter can be found. If your application does not comply with section 76(1) of the Patents Act 1977 (as amended) then it will not be published until any added matter is removed, which may delay prosecution. Highlighting where support can be found will allow decisions in respect of section 76(1) and antedating under section 15(9) to be made more effectively.

IPO, Registered Rights Legal and Practice Team, 3 January 2023

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