As mentioned on Monday by IPKat, the rules regarding time limits for filing divisional patent applications from UK applications are being changed.
Under the current system, if a notice of compliance under Section 18(4) Patents Act 1977 is received, the applicant would have two months within which to file any divisionals. The two month period is being maintain under the amended rule, however, there will be an additional requirement to meet. Namely, that the parent must not have received any objections in an examination report.
This means that if the parent was found to meet the requirements for grant after more than one examination, there would be no opportunity to file divisionals once the notice of compliance is received.
If divisionals are desired, it’s now worth considering how likely a response to an examination report is going to lead to allowance, and changing filing strategy as appropriate.
The incoming rule change maintains that divisional applications can be filed up to three months before the end of the compliance period of the pending parent application.
It’s not currently clear what the impetus for this amendment was. No consultation or impact assessment was carried out as it was considered to have no foreseen significant impact.
The Patents (Amendment) Rules 2014 (2014/578) replaces Rule 19 of the Patent Rules 2007, no other amendments are contained in this Statutory Instrument. The new Rule comes into force on 6 April 2014.
[Update 18/3/14 – After discussion with colleagues and review of the Black Book, it would appear that the new rule could just be a codification of current practice: “If the first report of the examiner, is issued under s.18(4) , rather than under s.18(3), a period of two months is set for (a) the possible filing of a divisional application under r.19(3)(a)…If objection under s.18(3) has previously been taken, the notification is simply a statement that administrative grant took place on the date of the notification. From that date, the filing of a divisional application is precluded by r.24(2)(c)”, CIPA Guide to the Patents Acts (7th Edition), Section 18.10.
Laurence Lai 17 March 2014