As from 1 May 2023 the UKIPO is changing its practice on the calculation of compliance periods for divisionals.
This change is important because the compliance period for all divisional patent applications is the same absolute date as for the parent application. In all cases (both parent applications and divisional applications) the compliance period is set as either (i) four years six months from the earliest priority date (or the filing date if there is no priority); or (ii) 12 months from issue of the first substantive examination report on the parent application, if this expires later.
Under the IPO’s revised practice, all divisional applications will inherit the original and un-extended compliance period of the parent application. This means that even if the parent application has had the compliance period extended, the divisional will have the original, un-extended compliance period.
This has the effect that the latest that an applicant will be able to file a divisional application without relying on discretionary extensions of time is 1 month before the expiry of the un-extended compliance date of the parent application. Even if the compliance date on the parent is extended, any divisional application must still be filed at least 1 month before the expiry of the un-extended compliance date.
The latest that an applicant will be able to file a divisional application when relying on discretionary extensions of time is two months after the expiry of the un-extended compliance date of the parent application. Discretionary extensions of time to enable the filing of divisional applications will only generally be awarded if an applicant can show that the circumstances are exceptional and that they have been properly diligent.
If you may wish to file a divisional application based on a UK patent application or would like further information on how the change may effect you, please contact your Potter Clarkson attorney or email info@potterclarkson.com.
