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Divisionals from a PCT (UK) patent application - beware the lurking compliance date!

In the context of an international PCT patent application, one of its primary benefits is that it essentially allows the cost of obtaining patent protection in multiple territories around the world (including the territory of the UK, which is a territory that can be designated in a PCT patent application), to be extended from around 12 months after, to around 30/31 months after (depending on the territory), the date when any first, priority, patent application relating to the PCT patent application was applied for.

In so far as protection in the UK is ultimately sought from a PCT patent application, through making an appropriate request before the UK Intellectual Property Office (UKIPO) within 31 months of the earliest priority date from the PCT patent application, this UK patent application will then be subjected to examination by the UKIPO, which is the entity responsible for handling UK patent applications, to determine whether the application is allowable.

For any UK patent application, including those pursued via the above PCT route, the application must be in order for grant by a compliance date. This date is the later of 4.5 years from the earliest priority date of the application, or 12 months from the date when the first examination report is issued by the UKIPO in respect of the UK patent application. Particularly for UK patent applications pursued via the PCT route (often also called a PCT (UK) patent application), the compliance date is often set by the latter scenario, noting PCT (UK) applications are not typically examined very quickly after they are entered into the UK national phase, assuming they are pursued towards the end of the above 31 month period and without any form of acceleration.

It is to be noted that this same compliance date applies not just to the PCT (UK) application, but also to any divisionals, or cascaded/second-generation divisionals which ultimately stem from this first pursued PCT (UK) patent application. That being the case, and for a given PCT patent application, all UK patent applications stemming from this PCT patent application will usually be impacted by the same compliance date. It is possible to extend the compliance date for a given UK patent family by two months, but this extension of time may practically only provide so much assistance.

So for those considering patent protection in the UK from a PCT patent application, and in so far as any divisionals may be contemplated, it is always worth considering pursuing such divisional patent applications as soon as possible, and not wait unduly until after the first examination report has been issued by the UKIPO, by which time there may only be less than 12 months for having any required UK divisional patent applications submitted; searched; examined; and allowed, before the compliance date for the UK patent family is reached.

Additionally, where a UK divisional patent application is contemplated, to avoid being pressed up against the compliance date, it can be helpful to consider whether accelerated examination may be of use, noting without such acceleration, this may mean that any examination reports from the UKIPO relating to such a divisional patent application may end up being issued proportionately close to the compliance date, thus leaving a relatively small amount of time to navigate the examination procedure of the application with the examiner.

In so far as accelerated examination is contemplated for a UK patent application, there is no official fee payable to the UKIPO to make such a request. That being said, a reason is required for the acceleration to be allowed - though the UKIPO is fairly pragmatic at allowing an acceleration request in so far as the provided reason is at least vaguely relevant and commercial. Indeed, valid reasons can often include:

  1. needing the allowance of the UK patent application for its potential use as a base application for a subsequent PPH request relating to another patent application in another territory;
  2. becoming aware of a potential infringement to which the UK patent application is relevant; or
  3. allowance of the UK patent application being required for the purposes of securing investment related to the UK patent application.

For providing yet further time to navigate the examination procedure of a UK divisional patent application(s) which is ultimately pursued from a PCT patent application, early entry into the UK national phase may also be beneficial. In other words, rather than entering the UK national phase at the end of the above 31 month period, pursuing earlier entry into the UK national phase may provide more time to navigate the examination procedure for all required divisional patent applications that might be contemplated, before the compliance date for the UK patent family is reached.

Noting the compliance date for UK national phase patent applications principally applies to all UK patent applications from the patent family, it can be seen that this compliance date may practically limit the extent to which cascading divisionals (that is, divisionals pursued from divisionals) can be pursued for a UK patent family. That being said, for particularly important patent applications relating to the UK, it is to be noted that European patent applications designating the UK (which are patent applications applied for at the European Patent Office, not the UKIPO) do not employ such a respective compliance date. Consequently for a European patent application, cascading divisionals are possible in principal. However, it is to be borne in mind that unlike a UK patent application where renewal fees are not payable before grant, European patent applications designating the UK require renewal fees to be paid each year whilst the European patent application remains pending. Furthermore, for European divisional patent applications, it is also necessary around the time of pursuing the divisional to pay all of the backdated renewal fees which would have been otherwise payable had the divisional patent application been pursued earlier on. This practicality can therefore make pursuing a European divisional patent application, particularly a cascaded divisional patent application, relatively expensive to pursue in comparison to a UK divisional patent application.

So for those contemplating divisional patent protection relating to the UK, it is always worth considering whether such protection should be sought sooner rather than later. Indeed, the compliance date waits for no-one!

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