Compliance Period for GB Patent Applications

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.

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.

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.

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).

Divisional applications must be filed by three months before the end of the compliance period on the parent application but must also be filed before the parent application is granted. Divisional applications 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. 

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.

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.

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.