From 1 October 2016, changes to the Patents Rules will come into effect. One of the major changes coming into force means that patent applicants will get advance warning prior to grant of their patent applications. This gives applicants a clear picture of the time left for divisional patent application filings.
Patents application practice
Historically, once a UK patent application meets all its formal and patentability requirements, the UK IPO usually proceeds with grant of the application. The applicant receives a notification of grant, indicating that grant has taken place and the date on which it is to be published. However, by the time the patent owner receives such a communication, it is too late for him or her to apply for a divisional patent application. The reason being that a divisional application can only be filed whilst the parent application is still pending, but grant has already taken place by the time the communication is received.
To avoid this, it has been common practice for applicants to raise the possibility of filing a divisional application in a letter to the UK IPO whilst the application is still pending and ask the examiner to forewarn them of grant. However, this requires foresight on the applicant’s part and such notice is at the examiner’s discretion.
New Patents changes
For all UK patent applications still pending from 1 October 2016, the UK IPO will now issue an intention of grant notification, which will typically provide the applicant with a window of one month to file any divisional patent applications.
Where such notification is issued at the first examination, the applicant will be provided with two months’ notice as provided by the Patents Rules, which is intended to provide the applicant with an opportunity to make voluntary amendments to the patent specification.
The existing requirement of filing a divisional application three months before the compliance date of the parent application still stands, the compliance date being four and a half years from date of filing or earliest priority, or one year from date of the first examination report.
Divisional applications are invaluable for applicants wishing to pursue protection on multiple aspects of their invention. The revised Patent Rules make it a great deal easier and clearer for applicants to factor the filing of divisional applications into their patenting strategies.
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