Statutory guidance

Compliance periods on divisional applications

Updated 25 April 2023

1. Introduction

From Monday 1 May 2023, the Intellectual Property Office (IPO) will no longer accord divisional applications a compliance period equal to the compliance period of the parent application as extended under r.108(2)/r.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 un-extended compliance period of the parent application as defined by rule 30(2).

2. Background

The IPO has concluded that its previous practice of according applications filed under s.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 r.108(2) or r.108(3) of the Patents Rules 2007 (as amended), is inconsistent with a proper construction of the relevant legislation.

In accordance with r.30(3)(b) of the Patents Rules 2007 (as amended), from Monday 1st May 2023, the IPO will attribute to a divisional application filed on that date or after, a compliance period of:

• (a) four years and six months beginning immediately after
  
  (i) 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 twelve 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 r.108(2)/r.108(3) as the un-extended compliance period of the divisional application. Extensions to the compliance period of both parent and divisional applications will continue to be available under r.108 in the normal way.

3. 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 28th 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 to 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 provided with the publication of this notice 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.

4. Enquiries

Any general enquiries about this notice should be made to:

Dr Jamie M. Frost
Registered Rights Legal and Practice Team
Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom

Tel: +44(0)1633 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
Intellectual Property Office
3 January 2023