UK IPO - Changes to Divisional Patent Applications
The UK Intellectual Property Office (IPO) has announced that its practice on divisional patent applications will change from 1 May 2023. This article explains how this change compares to the current situation and the steps clients can take on divisional applications.
The UK Patents Act and Rules sets a compliance period during which a patent application must be placed in order for allowance, otherwise it will be refused. Currently, the compliance period is the longer of:
- 4 years and 6 months from the priority date (or the filing date if no priority is claimed); or
- 12 months from the date of issue of the first substantive examination report.
It is possible to extend the compliance period once by two months, as of right. The IPO can grant further discretionary extensions if the applicant can show exceptional circumstances and that they have been properly diligent.
A divisional application must be filed no later than three months before the expiry of the compliance period of the parent application.
Under current practice, a divisional application is given an unextended compliance period that is equal to the compliance period of the parent application even if the compliance period of the parent application has been extended.
Thus, if the compliance period of a parent application is extended by two months and a divisional application is accorded the parent application’s extended compliance period as its unextended compliance period, then it is possible to gain a second two-month extension to the compliance period of the divisional application, as of right.
However, any divisional application filed after 28 April 2023 will be accorded the compliance period of the original and unextended compliance period of the parent application.
The practice change is only likely to be a concern for late-filed divisional applications that rely on the parent application having an extended compliance period. Where the compliance period of the parent application has not been extended, there will be no change in practice.
In summary, from 1 May 2023, a divisional application will be given a compliance period of the longer of:
- 4 years and 6 months from the earlier of the priority date or the filing date of the parent application; or
- 12 months from the date of the first substantive examination report issued on the parent application.
Extensions as of right and discretionary extensions will still be available for parent and divisional applications. Extensions to the compliance period of the parent application, however, will no longer be applied to the divisional application, such that the extended compliance period is considered the divisional application’s unextended compliance period.
While it is possible to file further divisional applications from a divisional application, the likelihood of this is significantly decreased by this change in practice since the deadline for filing any further divisional application will be calculated from the compliance period of the parent application. Therefore, it is possible that the compliance period of the further divisional application will be unable to be extended sufficiently to allow the application to be validly filed since rule 108(7) prevents any extension to the compliance period after the end of two months from expiry of the compliance period of the parent application.
Considering that under UK practice, any patent application needs to be in order for allowance by the end of the compliance period, this means that applicants should consider filing divisional applications as early as possible.
While an applicant may not always know whether a divisional application is required until substantive examination is underway and any claim amendments become obvious, we would recommend that you consider the need to file a divisional each time you amend the parent application to ensure any divisional is filed as early as possible.
We recommend that all clients with currently pending UK applications, review their applications to consider whether it would be beneficial filing a divisional application before the change comes into effect on 1 May 2023. Your patent attorney at Mathisen & Macara would be happy to advise you on the best course of action for your divisional applications.