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7 March 2023

Change to Compliance Period of UK Divisional Applications

Commencing on 1 May 2023, there will be a change in the way compliance periods for UK divisional applications are determined which may put Applicants under more pressure.

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. Thus far, the UKIPO has granted UK divisional applications 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, 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.

Rule 108 of the Patents Rules 2007 will still allow limited extensions to both parent and divisional application compliance periods in the usual manner. However, separate extension requests will now need to be submitted for the parent and divisional applications. From 1 May 2023, a UK divisional application filed on or after that date will have a compliance period of four years and six months starting immediately after the priority date (or filing date if there is no priority date). However, if it expires later, the compliance period will be a twelve month period starting 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 will have an impact on cascading divisionals, as all divisionals will now follow the 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  application, rather than the parent (first-generation divisional) from which it is submitted.

If you have any questions regarding this article, please contact your usual Venner Shipley representative or email mail@vennershipley.co.uk

 

 

 

 

 

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