From 1st May 2023, the UKIPO will accord the un-extended compliance period of the original parent application to all divisional applications. The compliance period as extended by the Comptroller following a request under r.108(2)/(3) Patents Rules 2007 will not be inherited by any subsequent divisional applications derived from that application.
The compliance period is the period for putting an application in order. By the end of the compliance period, the UKIPO may grant or refuse the application. This compliance period can be extended as of right r.108(2) and/or under the discretion of the Comptroller r.108(3).
Currently, the compliance period of a divisional application expires at the same time as the compliance period prescribed for the earlier application. If one or more extensions of time have been requested on the earlier application, then the divisional application automatically had the same extended compliance period on filing.
However, from 1st May 2023, the UKIPO will attribute to a divisional application filed on that date or after, a compliance period of:
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.
Therefore, when filing the divisional application, it would be prudent for an applicant to consider whether an extension of time under r.108(2)/(3) needs to be requested on filing to allow sufficient time to prosecute the divisional application.
For example, if the parent application was extended to file the divisional at a later date, then the same extension of time will need to be separately requested for the divisional application.
This change of practice will result in less time remaining to file and prosecute new divisional application. Therefore, if the applicant wants to help UKIPO to process divisional application quickly, then mark all correspondence as URGENT, and highlight where support can be found for newly claimed matters, removing risk of getting added matter objection which causes delays in the progression of the application.
The latest point at which the applicant will be able to file a divisional is the end of the period of two months beginning immediately after the compliance date of the parent application expired.
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), 1 month before the expiry of the un-extended compliance date of the parent application.
An applicant will be able to file a divisional application when relying on discretionary extensions of time under r.108 to satisfy r.19(2)(b), 2 months after the expiry of the un-extended compliance date of the parent application.
This change of practice will not affect divisional applications filed on or before 28th April 2023.
For further information please see: https://www.gov.uk/government/publications/compliance-periods-on-divisional-applications