In most jurisdictions, the amount of time spent in patent prosecution depends on the number of rounds of examination and the turnaround speed of the respective examining patent office. Prosecution may extend for many years in a complex case or in a case that remains dormant for long periods. Many patent offices also have mechanisms available that allow Applicants to slow down or delay patent prosecution if desired.
However, the UK Intellectual Property Office (UKIPO) is an exception. All GB patent applications must be put in order for grant within a fixed timescale, known as the compliance period.
What is the compliance period?
It is necessary for Applicants to have their GB patent applications ready for grant before the end of the compliance period. If the requirements of the UK Patents Act and Rules are not met by the end of the compliance period, then the application will be treated as having been refused.
How long is the compliance period?
The basic compliance period is four years and six months from the date of filing or, where priority is claimed, from the earliest declared priority date.
What happens if the UKIPO has delays?
In order to ensure that Applicants always have time in which to complete prosecution of their applications, the compliance period will be twelve months from when the first substantive examination report is issued, if that gives a later date than the basic four years and six months.
Similarly, if the first substantive examination report is not sent to the Applicant before the expiry of the basic four year and six month period stated above, the additional twelve month compliance period will begin from the date of that first Examination Report.
Can the compliance period be extended?
A two month extension to the compliance period is available as of right (Rule 108) and further extensions of time may be available at the discretion of the Comptroller (Section 117B).
Can more time be obtained by filing a divisional application?
Divisional applications can be filed up until the grant of the parent application, but they are subject to the same compliance period as the parent application. This means that more time cannot be obtained by filing a divisional application, and Applicants should therefore file any divisional applications sooner rather than later to maximise the time available for their examination.
What happens if third party observations are filed?
When third party observations are filed near the end of the compliance period, an automatic extension becomes available (Rule 30(4)). If third party observations are filed, an examination report is issued and the end of the compliance period is extended to three months from the date of that report.
Does the UKIPO monitor overdue examination report responses?
To check whether a reply to an examination report is overdue close to the expiry of the compliance period, periodical checks are carried out on all outstanding applications. A letter is then sent to the Applicant reminding them of the due date and intention of refusal (under Section 20(1)) and giving them a final opportunity to submit observations. All refusals of applications are advertised in the Journal.
Summary and Prosecution Tips
To summarise, Applicants should note that prosecution of a GB patent application cannot be significantly delayed. In addition, due to divisional applications receiving the same compliance period as the parent application, early filing of such divisional applications would be beneficial, allowing time for examination. The timeline of the compliance period becomes crucial when the PCT route is taken since by the time the application reaches the GB national phase entry stage, the application may already be close to the end of the compliance period. Examination of such applications may therefore need to be completed within 12 months of receiving the first UK Examination Report.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
