Statutory guidance

Notifications of intention to grant

Published 1 October 2016

1. Introduction

From 1 October 2016, the Intellectual Property Office (IPO) will issue a notification of intention to grant in relation to all patent applications which have met the requirements for grant of a patent.

2. Detail

The intention to grant letter will inform a patent applicant that their application meets all the requirements for grant of a patent. It will also state that the patent application will be sent for grant shortly after a certain date.

No further action will be required from the applicant in relation to the patent application in question. However, the letter will provide the applicant with a clear picture of the time left to take any other action they wish before grant. In particular, there will be a clear timeframe within which to file any divisional patent applications.

In the majority of cases the letter will give one month’s advance notice of grant. Two months’ notice will be provided if the letter is issued at the first examination, as is currently the case. (This two months’ notice is required by r.31(4)(a) of the Patents Rules 2007. It ensures the applicant has an opportunity to make voluntary amendments to their patent application and also provides an opportunity to file a divisional application.)

The introduction of these notifications means there is no need for applicants to “foreshadow” divisional applications ^{[footnote 1]}. Instead, from 1 October, all applicants will be guaranteed a period prior to grant in which such applications may be filed. Any divisional applications must be filed before grant and at least three months before the compliance date.

Notifications of intention to grant will be issued on applications which have met all the requirements for grant of a patent by the compliance date. The notifications will form a report under section 18(4) of the Patents Act 1977. They will be publicly available on the IPO’s online patent information and document inspection service (Ipsum).

3. Introducing the change

The introduction of this change in practice means that very few patents will be granted during October 2016, as patent applications which are examined during October and found to meet all the requirements for grant will generally not be granted until November. Patents granted on Tuesday 4 October 2016 will be the last patents to be granted with no advance notification of grant.

4. Legislative requirements - filing divisional patent applications

In order to introduce this change, rule 19 of the Patents Rules is being amended to allow divisional applications to be filed after a notification of intention to grant has been issued.

The requirement that divisional applications must be filed at least three months before the compliance date is retained. It also continues to be the case that divisional applications must be filed before grant of the earlier application.

5. Further information

We have published guidance about the package of changes to the Patents Rules which come into force on 1 October 2016 and 6 April 2017.

Detailed guidance about the IPO’s practice in relation to patent applications and patents can be found in Manual of Patent Practice.

6. Enquiries

Any enquiries about this notice should be made to:

Sarah Barker
Patents Legal Section
Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom

Tel: +44(0)1633 814807

Julyan Elbro
Acting Director of Patents
Intellectual Property Office
1 October 2016

1. Under this practice applicants request that grant be postponed to allow them a further opportunity to file a divisional application. ↩