Statutory guidance

Questions and answers on compliance periods on divisional applications

Updated 25 April 2023

Question 1: What is the impact of this practice change on applicants?

Under the new practice all divisional applications will, as required by r.30(3)(b), be accorded the un-extended compliance period of their original parent application, as determined by r.30(2). Applicants will therefore need to carefully consider the timing of the filing of divisional applications as well as the potential need to extend the compliance period of the resulting divisional application to enable it to be prosecuted.

Question 2: When is the latest I can file a divisional application without requiring Comptroller’s discretion?

Under this new practice the latest that an applicant will be able to file a divisional application without relying on discretionary extensions of time under r.108 to satisfy r.19(2)(b) is 1 month before the expiry of the unextended compliance date of the parent application. This will require that a Form 52 and fee requesting an as-of-right extension to the compliance period is filed on the parent application.

Discretionary extensions of time on a parent application in order to meet the requirements of r.19(2)(b) and enable the filing of a divisional application will only generally be awarded if an applicant can show that the circumstances are exceptional and that they have been properly diligent.

Question 3: When is the latest I can file a divisional application which I can subsequently amend?

Under this new practice if an applicant wants to be able to amend the divisional application after filing then the latest they will be able to file a divisional application, when relying on discretionary extensions of time on the parent application under r.108 to satisfy r.19(2)(b), is 2 months after the expiry of the unextended compliance date of the originally filed parent application. This is due to r.108(7) preventing the extension of the compliance date of the divisional application filed after this point – see Question 4 below.

Question 4: What is the latest point at which I will be able to file a divisional application?

The latest point at which you will be able to file a divisional while retaining any options to amend the divisional application is the end of the period of two months beginning immediately after the compliance date of the parent application expired.

A divisional application may be filed later than this providing that the requirements of r.19 are met. However, such an application must be in order for grant at the point of filing. This is due to r.108(7), which states that the compliance date cannot be extended if the extension is not requested before the end of the aforementioned period. Therefore, a divisional application filed later than this will be afforded a compliance date that has already past and cannot be extended. While the Office will consider whether such applications are in order upon filing, it will not be possible to amend such an application if it is not in order.

Question 5: If the compliance period of a parent application is extended by the Comptroller following a request under r.108(2)/r.108(3), what compliance period will the divisional application take?

Under the IPO’s revised practice the compliance period of a divisional application will be calculated according to r.30(2), that is, with respect to the relevant dates linked to the originally-filed parent application. In other words the divisional application will, in effect, inherit the original and un-extended compliance period of the original parent application.

Question 6: Will I be able to file a divisional application on or before Friday 28th April 2023 that is accorded a compliance date under the old practice, and then file a further divisional application from that divisional application on or after Monday 1st May 2023?

Yes, there is no change in practice in this regard. The new practice just means that the compliance period as extended by r.108(2)/(3) will not be passed down to any subsequent divisional applications derived from that application. Consideration should be given to the requirements of r.108(7) – see Question 4 above.

Question 7: Is it still possible to file a divisional application late i.e. with less than 3 months remaining of the compliance period on the parent application?

Yes, there is no change in practice in this regard although as discussed above the timelines involved in doing this will change. The r.19(2)(b) requirement can still be satisfied by either (a) extending the compliance period of the parent application under r.108(2)/r.108(3) and/or (b) requesting an extension to the r.19 period under r.108(1). Discretion to extend these time periods for the purposes of allowing the filing of a divisional application will only normally be exercised if the applicant has shown that the circumstances are exceptional and that they have been properly diligent. There is no change in this aspect of our practice and this topic is discussed at 15.21 of the Manual of Patent Practice.

Question 8: Will I be able to file a divisional application on or before Friday 28th April 2023 that is accorded a compliance date under the old practice, and then file a further divisional application from that divisional application on or after Monday 1st May 2023?

As divisional applications will no longer be inheriting the extended compliance date of their parent, in addition to satisfying the requirements of r.19 applicants will also have to be mindful of whether the compliance period of any divisional application filed is either current or capable of extension under r.108(2)/(3) at the date of filing.

It is possible that a small number of applicants who are accustomed to the current practice will have divisional applications filed on or before 28th April 2023 with compliance dates that are significantly past the compliance date of the original parent application. As per question 4 above, such applicants will find that they are unable to amend any further divisional application filed on or after 1st May 2023 as they will be unable to extend the compliance date of the new divisional application. This is because r.108(7) prevents any extension being granted to the compliance period after the end of the period of two months beginning immediately after it has expired. The period between publication of this notice and implementation of the new practice on Monday 1st May 2023, is designed to act as a transitional period to allow applicants to note this change in practice and adjust their future filing strategies accordingly.

Question 9: If I had to request one or more extensions of time to the compliance period of an application in order to file a late divisional application, will I also need to request equivalent extensions of time on the divisional application at the time of filing?

It will generally be necessary and expected to request the same extensions of time for the divisional application as were requested on the parent application, in order to enable the divisional application to be filed and to provide sufficient time for the divisional application to be prosecuted. Where the requests for extensions to the compliance date of the parent application have been allowed, it is expected that the equivalent extensions on the divisional application will generally also be allowed, bearing in mind the restriction set out by r.108(7), as discussed above.

Question 10: Will it still be possible to file sequential divisional applications?

It will still be possible to file sequential divisional applications (i.e. one divisional application off another divisional application) provided that the requirements of the Patents Act 1977 (as amended) and Patents Rules 2007 (as amended) are met. However, all such divisional applications will have the same compliance period as that initially accorded to the original parent application under r.30(2).

Question 11: If the un-extended 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 r.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 r.108.

Question 12: 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.

Question 13: 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.

Question 14: 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 s.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 s.76(1) and antedating under s.15(9) to be made more effectively.

Intellectual Property Office
Registered Rights Legal and Practice Team
20 April 2023