On the 3 January 2023, the UKIPO published details on changes to its practice regarding the compliance period for bringing a divisional application in order for grant.
The compliance period for a patent application is the period in which a patent application must be put in order for grant. The duration of the compliance period is laid out in Rule 30(3)(b) of the UK Patents Rules 2007, and is the later of 4 years and 6 months from the priority date of the application or 12 months from the receipt of the first substantive examination report. This compliance period may be extended by 2 months under Rule 108(2), and further extended by another 2 months under Rule 108(3).
Under the current rules, a divisional application is accorded the same compliance period as its parent application at the time the divisional is filed. This means that if the compliance period for a parent application has been extended, the divisional application will inherent the extended compliance period.
This leaves some confusion as to the scope for further extending the compliance period of the divisional, and the UKIPO has stated that this is not in keeping with the intent the Rules were drafted for.
From 1 May 2023, the UKIPO will no longer accord divisional applications a compliance period equal to an extended compliance period of the parent application on filing. This means that the compliance period of a divisional application must be separately extended if the applicant wishes, which may be necessary to allow the divisional application to be promptly filed and prosecuted.
If you have any queries about how these rule changes may affect your divisional application filing strategy, please do not hesitate to contact one of our advisers, either by email at mail@bailey-walsh.com or by telephone on 0113 2433824.
