UK divisional patent applications: Don’t delay
In the UK, a patent application must be in order for grant by the end of a “compliance period” and, if it is not, the application is deemed refused.
The compliance period is defined in the UK Patents Act as the later of: (i) four years and six months from the earliest priority date or if no priority is claimed, from the filing date, or (ii) twelve months from the date of the first substantive examination report. This is a straightforward calculation on a first/parent UK patent application, but is a bit more complex for divisional applications. The UK Intellectual Property Office (IPO) is now changing how it calculates the compliance date for divisional applications.
The new practice, which will come into effect on May 1, 2023, may reduce the amount of time available to prosecute a divisional application, so it is advisable to file divisional applications in the UK, if required, at the earliest opportunity.
In this article, we first provide a summary of the current and new practices.
For divisional applications that are filed a long time before the end of the compliance period, nothing is really changing. However, for divisional applications filed “late”, ie close to the end of the compliance period, things are changing. Therefore we also provide, for those interested in knowing more, a detailed explanation of how the change in practice may impact the actions required to file and prosecute a “late” divisional application.
Current practice: A summary
Currently, the compliance period for a UK divisional application is the same as the parent application’s compliance period, except if the parent’s compliance period has been extended. It is possible to extend the compliance period of the parent application by two months (and potentially further, but any such further extensions are discretionary). This extension may be obtained when more time is needed to place the application in order for grant.
Currently, when the parent’s original compliance period has been extended, the UKIPO considers the parent’s extended compliance period to be the un-extended compliance period for the divisional application, if the extension is obtained before the divisional is filed.
As a result, under the current practice, the compliance period of a divisional application could end later than the compliance period on the parent application. This is because the divisional application’s compliance period can itself be extended by two months, for the same reason.
New practice: A summary
Under the new practice, which comes into effect on 01 May 2023, a UK divisional application’s un-extended compliance period will be the same as the original un-extended compliance period of the parent, even if the parent’s compliance period has been extended before the divisional is filed.
Since divisional applications must be filed when there are at least three months remaining in the compliance period, it will be necessary to think more carefully if a divisional application is to be filed “late”.
More details about this are provided below. Importantly, this change also applies to divisional applications that themselves derive from a divisional application—they are assigned the same un-extended compliance period as the original parent application as well.
Additionally, the compliance period of the divisional application itself can no longer be extended beyond the extended compliance period of the parent application, which effectively means that there will be less time to prosecute divisional applications towards grant under the new practice.
However, the change in practice will have no impact on divisional applications filed on or before 28 April 2023 – these will be given a compliance period based on current practice. Thus, to benefit from the more generous current compliance period calculation, you may wish to file new divisional applications by this date.
After May 1, 2023, it will be useful to file new divisional applications at the earliest opportunity, to ensure there is sufficient time to prosecute the application before the compliance period (plus any extensions) ends. In both cases, you may wish to file divisional applications if, for example:
