Intellectual Property Office
20.01
Rule 30 is relevant to this section. This rule sets out the compliance period, ie the period for putting an application in order.
| Section 20(1) |
| If it is not determined that an application for a patent complies before the end of the prescribed period with all the requirements of this Act and the rules, the application shall be treated as having been refused by the comptroller at the end of that period, and section 97 below shall apply accordingly. |
20.02
r.30, r.2(2), r.108(4) is also relevant.
The period prescribed for the purposes of this subsection (and for s.18(4)) is the compliance period. The compliance period is (i) four years and six months calculated from the declared priority date or, where there is none, from the filing date of the application; or (ii) twelve months calculated from the date that the first substantive examination report is sent to the applicant, whichever expires the later. Where the first substantive examination report is not sent to the applicant before the expiry of the period set out at (i) above, that period is extended to such date as that report is sent to the applicant and the period set out at (ii) then applies. The above periods, set out in r.30, ensure that applicants always have time in which to complete prosecution of their applications, and ensure that the application does not lapse if the first s.18 report does not issue until after 4 years.
However, r.30(3)(a) specifies that where the application claims an earlier date of filing under s.8(3), 12(6) or 37(4), the period is either (i) the period prescribed by r.30(2) in relation to the earlier application, or is (ii) eighteen months from the actual date of filing, whichever period expires the later.
From 1st May 2023 the way divisional applications are accorded their compliance date will change (see also 15.20.1):
(i) For divisional applications filed prior to 1st May 2023, any extension made under rule 108 to the compliance period prescribed on the earlier application (the so-called parent application) will also apply to any divisional applications filed on or after the date that the period was extended. The compliance period for any such divisional applications will therefore be the period as extended. However, if the compliance period prescribed on the earlier application is later extended, that extension will not apply to any divisional applications which have already been filed; a separate request will be required to extend the compliance period for any such divisional applications.
(ii) For divisional applications filed on or after 1st May 2023, any extensions to the compliance period of the earlier application under r.108(2)/r.108(3) will no longer be inherited upon filing. From 1st May 2023 all divisional applications will be accorded a compliance date that is the same as the un-extended compliance date of their parent application in accordance with r.30(3)(b).
The period for putting any application in order may be extended in two month tranches in accordance with r.108(2) or (3) and (4) to (7), see 123.34-41. The period may also be extended by the provisions of s.20(2) (see 20.08 - 20.10). For the periods in the case of divisional applications, in the case of new applications filed under s.8(3), 12(6) or 37(4), or in the case of European patents (UK) converted under s.81 also see 15.20.1, 8.25.1, 12.16.1, 37.17.1 and 81.19 respectively.
In Xus Application (BL O/610/22) the Hearing Officer (HO) considered what factors should be taken into account when deciding whether or not to exercise the Comptrollers discretion to allow a 4th extension to the compliance period under r.108(3), for the purposes of allowing an applicant the opportunity to overcome the objections set out in a s.18(3) report (see also 18.59). The HO decided that the key issue was to balance the reason why the discretionary extension was being requested against the need to provide certainty for third parties. Furthermore, the number of extensions already allowed and how close an application was to being acceptable, were relevant factors to consider to avoid the spectre of endless extensions.
[ ELC4 should be added to the covering letter when the first report under s.18 is issued later than three years and six months from the priority or filing date. For the procedure if ELC4 was omitted from a first examination letter issued later than three years and six months from the earliest date, see 18.47, 3rd indented paragraph. ]
[ ELC5 should be added to the covering letter of the first s.18 report on a divisional application when the first report on the parent application was issued later than three years and six months from the priority or filing date. It should also be used in the covering letter for a subsequent s.18(3) report on such a divisional application if it was not used at the time of the first report. ]
20.02.1
r.30(4), r.29(3)(b) and r.29(4) is also relevant.
R.30(4) provides for an automatic extension of the prescribed period when, as a consequence of observations under s.21 are filed near to the end of the period and give rise to a report under s.18(3) is issued. Where the date of the letter embodying that report is within three months of the end of the existing compliance period, the compliance period becomes three months from the date of the letter. This applies only to the first s.18(3) report based on those particular observations, if there is more than one such report. Rule 30(4) refers to this report as a first observations report, and this term is defined in r.29(3)(b) and r.29(4). In Akron Brass Companys application BL O/012/19 the hearing officer found that only observations relating to s.1(1) (for example novelty or inventive step) can satisfy rule 29(4)(a). Therefore, observations in respect of other issues (such as added matter and clarity) cannot be used as a basis for an extension under r.30(4). Where observations relate to both s.1(1) and other issues, only the parts relating to s.1(1) may be relied on as the basis for an extension under r.30(4). That is, the report under s.18(3) must be issued as a consequence of the parts of the observations relating to s.1(1). The hearing officer held that the examination report in question was not issued as a consequence of the observations, since there was no reason to doubt that a competent examiner would have independently arrived at the objections raised in the examination report. The hearing officer therefore found that an extension was not possible under r.30(4).
[ ELC6 should be used in the examination (covering) letter to inform the applicant of the extension of the period following s.21 observations. ]
20.02.2
In Annings Patent Application [2007] EWHC 2770 (Pat), it was held that the compliance period is a period during which the requirements of the Act and Rules must be complied with. It does not impose any additional requirement on the applicant. Therefore it follows that the compliance date does not roll over to the next working day if it falls on a non-working day, since it is not of itself a deadline for doing anything under the Act. See 120.07.
20.03
Outstanding applications are periodically checked to detect those on which a reply to a report issued under s.18(3) is overdue where the compliance period has nearly expired. A letter is sent to the applicant forewarning of the intention to refuse each such application under s.20(1) and giving the applicant an opportunity to submit any observations which might affect refusal. When the compliance period has expired, the application is forwarded to the relevant formalities group for refusal to be authorised. If it is found at that time that the forewarning letter has not been sent, another letter forewarning of the intention to refuse is sent before refusal is confirmed, allowing one week for the applicant to submit any observations. When refusal has occurred, it isadvertised in the Journal.
[ The COPS records are combed weekly and applications that are 4