Following IPcopy’s post last week regarding the amendment to divisional deadline rules, ipcopymark reached out to the UK Intellectual Property Office to seek clarification over why the rule was being changed and whether the new rule will change any procedures at the UKIPO going forward.
The response from the UKIPO confirmed that there is not intended to be any change to the practice of filing divisional applications at the UKIPO. However, it was confirmed that incoming Rule 19 is being introduced to address a perceived flaw in the drafting of the current Rule 19 in which it could be argued that the two-month divisional period would be reset following the issuance of every communication under Section 18(4) Patents Act 1977. Whether or not you interpret current Rule 19 in this way, the incoming Rule 19 closes this potential loophole.
In practice, the UKIPO only issues one Section 18(4) communication if the patent application as filed or amended following the search report is in order for grant. If the application is amended during examination and subsequently found to be allowable, the UKIPO simply provides a notification of administrative grant without citing Section 18(4). Currently, the date of administrative grant ends the period for filing divisional applications.
When Rule 19 (Patent Rules 2007) was introduced, it was intended to replicate the effect of Rule 24 (Patents Rules 1995). Amended Rule 19 now clarifies that the first 18(4) begins the two-month deadline for filing divisional applications.
Initially, paragraph 5 of the new rule (which explicitly mentions multiple 18(4) notifications) led the ipcopywriters to speculate that the implementation of the new rule would lead to the UKIPO issuing 18(4) communications almost like Rule 71(3) EPC communications from the EPO. However, this appears not to be the case. It is also noted that issuing 18(4) communications in this way would have the disadvantage that it would delay grant for all applications.
Meanwhile, the UKIPO has stated that they are planning a consultation on changes to divisional practice (see the 2013 Customer Visit Programme report, page 13) which will hopefully address points such as relaxing the compliance deadline for divisional applications (currently the same as the parent application) and the inclusion of a standard paragraph in communications from the UKIPO stating the divisional deadline. Another grant related issue that could possibly be improved is the payment of renewal fees after late grant which can currently lead to two renewal fees having to be paid very close to each other.
Amended Rule 19 comes into force on 6 April 2014.
Laurence Lai 27 March 2014