The way that 'divisional' applications are treated in the UK is a bit different to how they are treated at the EPO. This sometimes catches applicants out, which I wrote about a while ago in this post. In brief, unlike at the EPO where the rule is that a divisional application can be filed as long as there is a pending parent application (with some additional leeway for the time allowed for filing an appeal against refusal), Rule 19(2)(b) of the UK 2007 Patents Rules requires a new application under section 15(9) (commonly termed a divisional application) to be filed before the period ending three months before the compliance date of the earlier application. The compliance date is defined by Rule 30 as the end of the period of four years and six months from the date of filing (or the earliest priority date) or, if later, twelve months from the date of the first examination report. This can sometimes catch applicants out if they find themselves running up to the end of the compliance period and, with their EPO frame of mind, thinking that they still have time to file a divisional while the parent is still pending. Although extensions are available to the compliance period under Rule 108, any as of right extension is limited to only two months. It is therefore necessary to rely on the discretion of the examiner to get a divisional validly filed if you are already less then two months away from the compliance date.
Practice at the UK IPO has been to take any extension to the compliance period applied to the parent application as being also applied to any divisional application. The effect of this has been that, in some cases, applicants can take advantage of repeated extensions to the compliance period and still file a divisional application if things are not going their way just to keep something pending. An example of this is in decision BL O/610/22 (Wei Xu), where the applicant filed repeated requests under Rule 108 to keep extending the compliance period and filed several divisional applications, keeping prosecution going on multiple related applications for years. The IPO eventually grew tired of this and refused to grant any further requests under Rule 108 because the applicant was not making any realistic attempts to progress the applications. It looks like this kind of practice, if not this actual case, has now made the IPO look again at how the compliance period should be determined for divisional applications. The IPO has recently issued some statutory guidance on how they will be determining the compliance period as from 1 May 2023. This states:
In accordance with r.30(3)(b) of the Patents Rules 2007 (as amended), from Monday 1st May 2023, the IPO 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.
This change in practice will mean that the IPO will no longer treat the compliance period of the earlier parent application that has been extended under r.108(2)/r.108(3) as the un-extended compliance period of the divisional application. Extensions to the compliance period of both parent and divisional applications will continue to be available under r.108 in the normal way.
The key part of the guidance is underlined above. The effect of this is that the practice of repeated extensions will no longer allow applicants to keep the option open of filing divisionals. This will also very tightly compress timescales for getting divisionals allowed, relying more on the IPO's discretion to allow extensions. Applicants and their attorneys, particularly those used to the more generous provisions at the EPO or USPTO, should pay close attention.