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(3) 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.
In Munchkin Incs Application (BL O/623/17) the hearing officer considered, among other things, whether to exercise the Comptrollers discretion to allow an extension to the compliance period for the purpose of filing amendments on both a parent and divisional application. The hearing officer concluded that the workload faced by the Applicants legal staff working on an application was not grounds for a discretionary extension to the compliance period under r.108(3). A short time scale for responding to objections set out in a s.18(3) examination report was also not considered to be exceptional.
The hearing officer emphasised in BL O/623/17 that for pre-grant amendments to be considered it is necessary for them to be filed before the end of the compliance period. Where an extension to the latest date for reply is requested under s.117B (see 18.53-18.60) such that the extended latest date for reply would exceed the compliance period, the applicant must first request an extension to the compliance period and have that request accepted under r.108 so that the latest date for response would fall within the extended compliance period. That is to say, the compliance date under s.20 takes precedence over any request to extend the specified latest date for reply. Where amendments are filed after the end of the compliance period and an extension to the compliance period is disallowed, those amendments cannot be considered, as concluded in Optinoses application (BL O/144/12).
The hearing officer in Metabiotechs application (BL O/359/23) concluded that neither geographical distance between the applicant and agent, nor complexity of subject matter constituted exceptional circumstances and therefore were not grounds for a discretionary extension of the compliance period under r.108(3). However, an exam report was issued one day before the end of the compliance period which introduced a new citation and objections. Discretion was therefore exercised to extend the compliance period to give the applicant an opportunity to respond to the updated objections.
While r.108 requires that any request for an extension to the compliance period is accompanied by a Form 52, under certain circumstances the explicit use of the form is not essential. The hearing officer in 4D Pharmas application (BL O/202/21) concluded that where a request for a discretionary extension was filed via email and the associated fee had been waived due to Covid-19 provisions, a written request for a discretionary extension was sufficient to allow an extension, provided that it included all the necessary information, i.e., a request for a discretionary extension to the compliance period and an appropriate reason for doing so, on the basis of r.4(2) and r.4(5). However, as the hearing officer concluded in Optinose application (BL O/144/12), the applicant must provide a clear indication that they are requesting an extension to the compliance period, and provide evidence to support a request for a discretionary extension, even if a form 52 is used.
It should be noted that while decisions relating to discretionary extensions of specified periods under r.109, such as the latest date for reply to a s.18(3) examination report, are legally distinct from those under r.108, the rea