Change to compliance periods for UK divisional applications
On 01 May 2023 the UKIPO will be changing its practice regarding the compliance period according to divisional application.
As of 01 May 2023 the compliance period for UK divisional applications will be equal to the original and un-extended compliance period of the parent application.
What is a compliance period?
The UK Patents Act defines a compliance period of four and a half years from the priority date of a patent application or one year from the date on which the first substantive examination report is sent to the applicant (whichever period expires later).
The compliance period sets a deadline for putting the application in order – this means that applications which do not meet the requirements of the Patents Act before the end of the compliance period will be deemed to have been refused.
There are mechanisms for extending the compliance period, for example, an initial two-month extension is available as of right, and further discretionary extensions may also be available.
What is a divisional application?
A divisional application is a further application that has been spun out of an initial “parent” application. It can only contain subject-matter that was present in the parent application, but it receives the same filing date as the parent application.
A divisional application can only be filed while the parent application is still pending (that is, not granted, refused or withdrawn), and must be filed at least three months before the end of the compliance period.
Compliance period for a divisional application: what was the previous practice?
Previously, the UKIPO has treated the compliance period for a divisional application as being identical to the compliance period for the parent application including any extensions applied.
This will cease to be the case from 01 May 2023.
What is changing?
From 01 May 2023 any extensions applied to the compliance period of the parent application will no longer apply to the compliance period of the divisional application by default. Extensions to the compliance date for the divisional will still be available on request, but the starting point will now be the unextended compliance period of the parent application.
This change comes into effect on Monday 01 May 2023 (which is a public holiday in the UK). The change will therefore not apply to divisional applications filed on or before Friday 28 April 2023.
The main impact of this change in practice will be a potential reduction in the time available for putting a divisional application in order. Practically, this makes it more important than ever to file UK divisional applications sooner rather than later.