Insights: Change to compliance period of UK divisional applications

The way of determining the compliance period of a UK divisional application is changing on 1 May 2023. From 1 May 2023 a newly-filed divisional application will be accorded a compliance period which is the same as the original and un-extended compliance period of the original parent application (i.e. the original UK application at the top of the family tree). This may constrain the filing of cascading divisionals, but if no extensions to the compliance period have been obtained on the original parent application, then you will not see any difference following this rule change.

The compliance period is the period for putting an application in order for allowance (i.e. at the end of the period, the application must be in a form that the UKIPO is willing to grant or it is refused). Up until now, the UKIPO has accorded UK divisional applications the same compliance period as the direct parent application. Therefore, currently, if the parent application’s compliance deadline had been extended, then that same extended deadline would be applied to the new divisional.

Limited extensions to the compliance period of both the parent and the divisional applications will still be available under Rule 108 in the normal way.  Separate requests for extensions will, however, need to be made for the divisional versus the parent.

From 1 May 2023, the UKIPO will give a UK divisional application filed on or after that date a compliance period of:

• four years and six months beginning immediately after the priority date (or the filing date if there is no priority date); or
• if it expires later, a 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.

The change can therefore have an impact on cascading divisionals which will now be more time-constrained. Any divisional will take the original 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 UK application, and not the parent (first generation divisional) from which it is filed.

We recommend contacting your Boult Representative if you have any questions about your UK application(s), and particularly about the filing of any UK divisional applications.