Home » Law » UK Changes Divisional Deadline Rules [Updated]

UK Changes Divisional Deadline Rules [Updated]

Keltie LLP

K2 IP Limited

About IPcopy

IPcopy is an intellectual property related news site covering a wide variety of IP related news and issues. We will also take the odd lighthearted look at IP. Feel free to contact us via the details on the About Us page.

Disclaimer: Unless stated otherwise, the contributors to IPcopy (the "IPcopy writers") are patent and trade mark attorneys or patent and trade mark assistants at Keltie LLP or are network attorneys at K2 IP Limited. Guest contributors will be identified.

This news site is the personal site of the contributors and is not edited by the authors' employer in any way. From time to time however IPcopy may publish practice notes, legal updates and marketing news from Keltie LLP or K2 IP Limited. Any such posts will be clearly marked.

This news site is for information purposes only. Information posted to this news site is not legal advice and should not be taken as such. If you require IP related legal advice please contact your legal representative.

For the avoidance of doubt Keltie LLP and K2 IP Limited have no liability as to the content of IPcopy and any related tweets or social media posts.

Privacy Policy

IPcopy’s Privacy Policy can be viewed here.

Lord Younger signed the SI on 8 March

Lord Younger signed the SI on 8 March

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.

Comments welcomed!]

Laurence Lai 17 March 2014


Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out /  Change )

Facebook photo

You are commenting using your Facebook account. Log Out /  Change )

Connecting to %s

This site uses Akismet to reduce spam. Learn how your comment data is processed.

%d bloggers like this: