On the 1st October 2016, new changes to UK Patents Rules came into force. While changes to the patent application process can often be a cause for concern for patent owners, this time the news from UKIPO has been warmly welcomed.
The key change means that patent applicants will now get advance warning before their applications are granted. Patent applicants filing at the European Patent Office (EPO) and in the USA already receive notifications of the Intention to grant, so this change in legislation will bring the UKIPO rules closer to alignment with European and US processes.
The Difficulty of Divisional Patent Applications
In the past, when a UK patent application was deemed to meet the formal requirements of patentability, the UK IPO would have granted the application, and then notified the applicant. By the time the applicant received notification of the grant and the publication date, it would already be too late to apply for a divisional patent application.
As a result, it has become common practise for applicants to write to the UK IPO while their application is still pending, in order to raise the possibility of filing a divisional application. This can be extremely problematic, as at the time of filing the parent application, the applicant may not have even anticipated that divisional patents might be required.
‘Poisoned Divisional’ Patents
Divisional patent applications (also called a divisional application, or simply a divisional), are essential for applicants who want to protect multiple aspects of their invention. The parent application describes the overall invention, and the divisional applications split the parent application into individual inventions.
The pitfalls associated with divisional patent applications filed with the EPO has long been debated, particularly in relation to partial or multiple priority rights for clamed inventions has caused legal difficulties in the past and meant they are often referred to “poisoned divisionals” by IP Kat and other industry commentators. Hopefully this move by the IPO will help to simplify at least one facet of divisional patents.
New Notification of the Intent to Grant
Notification of the Intent to Grant is important as it will give applicants a window of opportunity (typically one month) to file divisional patent applications, or where notification is issued at the first examination, two months’ notice will be given. The current requirement to file a divisional application three months before the compliance date of the parent application remains unchanged.
This advance warning means that patent owners can plan ahead — with a clear indication of how much time they have left to file their divisional patent applications, applicants can be more strategic with their patenting activity, and not leave anything to chance.