Change to Compliance Period of UK Divisional Patent Applications
The compliance period is the duration within which an application must be put in order for allowance, which is when the UKIPO is ready to either grant or refuse the application.
The compliance period is a period of 4 years and 6 months from the filing date (or the priority date), or, if later, a period of twelve months beginning immediately after the date on which the first substantive examination report is sent to the applicant (usually on the parent case).
Thus far the UK Patents Act provides that UK divisional applications have the same compliance period as their direct parent applications. Consequently, if the parent application’s compliance deadline was extended, the same extended deadline would apply to the new divisional application. However, as of 1st May 2023 this has changed.
What to expect now?
Now, when a newly filed divisional application is submitted on or after 1 May 2023, it will be assigned a compliance period equivalent to that of the original parent application without any extensions that the parent may have had.
As a result of this change, sequential or cascading divisional applications may be more constrained by time limits. Any divisional application will take the original non-extended compliance period of the original parent application. For example, a second-generation divisional will have the non-extended compliance deadline of the grandparent UK application, and not the parent (first generation divisional) from which it is filed.
If the compliance period of a parent application is extended following requests under rules 108(2) and 108(3), a divisional application will still inherit the original and unextended compliance period of the parent application. Therefore, the applicant would need to request extensions to the divisional application separately because any extensions to the compliance period of the parent application will not be automatically ‘passed down’ to divisional applications.
We recommend contacting your patent attorney at Avidity IP if you have any questions about your UK application(s), and particularly about the filing of any UK divisional applications.