Chapter 10: Extension of time limits (Rule 108 and Rule 109)
Sections (10.01 to 10.84) last updated: July 2020.
10.01
To progress an application through to grant an applicant must comply with various requirements of Patent Law within given time limits.
10.02
There are two types of time limit:-
i) Prescribed time limits - these are set out in the Patents Act or The Patent Rules which means the requirement must be met within that period. The extension of prescribed periods is governed by rule 108 and may be either automatic (as of right) or discretionary and may require the filing of a Form and fee.
If a prescribed time period has expired without the requirement being met, the Office can treat an application as being withdrawn or refused. This means that the applicant has either accidentally missed the filing date or chosen not to continue with the application by not meeting an official requirement. Applications being treated as withdrawn will be terminated and will be advertised as such in the Patents Journal. For applications treated as refused, a hearing must be offered before they are terminated.
ii) ‘Specified time limits’ – these are time limits where the Office decides how much time the applicant has to respond. Examples include time to file formal drawings or time to reply to an examination report when the Formalities Examiner or Patent Examiner will set the time limit. Specified periods are extendable under rule 109. Failure to meet a specified period results in discretionary refusal.
10.03
When an application is withdrawn because a prescribed requirement has not been met, the applicant may not amend or correct the original filing (for example by deleting the priority date) [r.31 or s.117] in order to remove the requirement or gain more time to meet it. If presented with this type of request the Formalities Examiner should refer to MOPP 117.19 Payne’s Application as a point of reference. The application will remain withdrawn until the Office has allowed a request to reinstate the case.
10.04
Any form or document (except a new Patent application which does not claim priority) which arrives at the Office on a Saturday Sunday or Bank Holiday is given the next working day as its date of receipt because the Office is closed during the weekend and on Bank Holidays. If a relevant period expires on Saturday Sunday or a Bank Holiday the form or document is not treated as filed late if it is filed on the next working day because, in the normal course of events, it would have been filed in time.
10.05
A form or document cannot be deemed to be filed on a day when the office is not open for that type of business. For example a withdrawal request received on a weekend or Bank Holiday is not effective until the next working day. See How to file documents with the Intellectual Property Office.
10.06
Rule 108 sets out the various ways in which the time limits prescribed in the Rules may be extended. Rule 108 is governed by Schedule 4 to the Patent Rules 2007. (See Annex 10A - Schedule 4 Patent Rules 2007) Schedule 4 is simply a list of Rules divided into three parts.
10.07
The first step in dealing with an extension of time request is to identify the time period which has been missed and therefore which rule applies to it. The next step is to find that rule in the Schedule and then to identify the correct extension regime.
10.08
There are 5 options: - Part 1, Part 2 only, Parts 2 and 3, Part 3 only and not listed. These are explained below.
10.09
Time limits for rules listed in Part 1 cannot be extended. These include:-
- R.6(2)(b) Making a declaration of priority after filing
- R.7(1) Requesting permission to make a late declaration of Priority
- R.32(1) Requesting reinstatement
- R.109 Requesting extension of time limits set by the Comptroller
- R. 66(3) Requesting permission to make a late declaration of Priority in respect of an international application for a Patent (UK)
10.10
The period for making a late claim to priority or a late declaration of priority cannot be altered.
If a request on a Form 3 to make a late claim to priority is received out of time the letter at Annex 6D(i) should be issued.
If a late declaration of priority is requested out of time it should be referred to the Casework Lead.
Part 2 only
10.11
Part 2 lists those time periods which may be extended under rule 108(2) or 108(3).
For those which appear ONLY in Part 2 the extension of time must be requested on a Form 52 with fee.
10.12
The Form 52 MAY be filed within two months of the expiry of the time period in which case the extension will be automatic and no evidence is needed. The Formalities Examiner may action this using COPS function SET TIME LIMIT. (SET TIM)
10.13
However, the Form 52 may also be filed later than two months after the time period has expired in which case any extension is discretionary.
It is not necessary to have obtained a first automatic two month extension but the request must be supported by evidence and the request should be forwarded to the Casework Lead for approval before processing. In response to an enquiry about such an extension, the Formalities Examiner should issue a letter such as the example in Annex 10B - Response to Enquiry letter (Rule 108(3)).
10.14
There are very few rules listed only in Part 2 but the main ones are:
- R.8(1) and (2) Filing of priority documents
- R.18(1) Filing Missing Parts after notification by the office
Part 2 and 3
10.15
Part 2 lists those time periods which may be extended under rule 108(2) or 108(3) and Part 3 lists those time periods which are subject to restrictions under rule 108(5) and 108(7). Therefore where a rule is listed in BOTH Part 2 and Part 3 the extensions available under rule 108(2) and (3) are restricted.
Time periods falling into this category are those where failure to comply with the time limit will result in termination.
10.16
This means that any request to extend any of these time periods MUST be made on a Form 52 which MUST be filed within two months of the time period expiring. This provides an automatic two month extension under rule 108(2). The Formalities Examiner may action this using the function SET TIME LIMIT.
10.17
No further extensions can be granted for time periods in this category unless the initial automatic extension has been requested within the time prescribed.
10.18
If a further extension is required the request MUST be made on a Form 52 and be accompanied by evidence.
The second Form 52 MUST be filed within two months of the expiry of the automatic extension.
A further extension is discretionary under rule 108(3) and, should be forwarded to the Head of Casework & Training for approval before processing.
If it is allowed, the extension will be for two months only. If any further extensions are required the procedure must be repeated. See 10.31
10.19
If more than two months has elapsed after the time limit has expired without any extension request being made then the application is treated as withdrawn and the applicant should be advised of the reinstatement process.
The rules listed in Parts 2 and 3 include:
- R.10(1) Filing of Form 7
- R.22 Filing claims, abstract, application fee, F9A
- R.28 Filing Form 10
- R.30 Putting application in order
- R.66 Entry to National Phase
- R68 F9A and F10 on s.89 application
10.20
Those time periods listed in Part 3 only may be extended under rule 108(1). No Form 52 or fee is required but the request should be made in writing and explain the reasons for late filing.
All extensions in this category are discretionary and must be requested within two months of the time limit expiring. Any further extensions must be requested within two months of the expiry of the first extension and if allowed will be for a further two month period.
Time periods in this category include:
- time for filing name and address details (Rule 12(3))
- time for filing a divisional application (Rule 19)
- time for filing the translation of a foreign language description
- rule 12(9).
10.21
A request for an extension of time under rule 108(1) should be referred to the Casework Lead to consider. If discretion is allowed, the Formalities Examiner must notify the applicant in writing (see Annex 10C - Letter allowing Rule 108(1) extension) and complete any necessary Formalities action.
10.22
When the request for extension of time is declined, the Casework Lead will inform the Formalities Examiner to issue letter Annex 10D - Letter refusing Rule 108(1) extension.
10.23
Extensions of time for any rules not listed in Schedule 4 are discretionary under rule 108(1) but are unrestricted. No form or fee is required but very few Rules are not listed in Schedule 4.
10.24
Formalities may set or change time limits so that outstanding requirements are highlighted and automatic extensions of time under r.108(2) are recorded.
10.25
Receipt of the F52 and confirmation that the extension has been actioned should be recorded in a minute. The application may then proceed.
10.26
The period for putting a patent application in order for grant may be extended in two ways:
(a) If a F52 has been filed before or within the two months after the s. 20 compliance period has expired use function SET TIM
If a F52 or other request for an extension is filed later than two months after the compliance period expired, the matter should be referred to the Head of Casework & Training (via the Casework Lead) for action.
(b)The applicant is guaranteed a period of one year in which to put the application in order following issue of the first s.18 examination report (or from the date of first s.18 examination on the parent application if it is a divisional).
If, for whatever reason, when the report is issued the applicant has less than a year to respond the compliance period must be extended. This should be done automatically via the PROSE system but if necessary the Casework Lead can extend the period using the function CHA CAS (Change Case Details – Option 10):
10.27
A single Form 52 and fee cannot be used to extend the rule 30 period on both a parent and an existing divisional. The act of extending the rule 30 period on a parent does not automatically extend the rule 30 on the divisional. A separate form must be filed for both applications (see 14.39).
If the r30 period is extended on the parent application on the date of filing or before the divisional is filed, one F52 will cover both r30 periods. However if the EOT request is made after the divisional application is filed, 2 separate forms will be required.
10.28
If an application is not in order for Grant by the end of the compliance period [s.20 and r.30] of four years and six months period, an extension of two months as of right can be requested. See 10.26 The extension must be requested within two months of the expiry of the period and is effective retrospectively.
10.29
A divisional application may be filed up to three months before the end of the compliance period of its parent. Therefore a divisional application filed one month before the end of the unextended s.20 period of its parent will be allowable if it is accompanied by a request to extend that period under rule 108(2).
10.30
A request on F52 to extend the r.30 period by two months may also be made before the compliance period has expired – this will have the effect of allowing more time under rule 19 to file a divisional application. (see 14.05 - 14.06) When the divisional is filed it will then take the extended compliance of its parent.
10.31
A further discretionary extension of time may be granted in respect of any of the time periods listed in Part 2 of Schedule 4.
- for time periods listed in Part 2 only
The extension may be requested at any time after the expiry of the time limit and the extension may be of indefinite length but only for those time periods which are not listed in Part 3 of Scheduled 4. The extension will only be allowed if the Office decides that there are sufficient reason(s) to allow it.
- for time periods listed in Part 2 and 3
Rule 108(3) provides for a discretionary extension of time beyond the automatic two month period allowed under rule 108(2).
10.32
Any request for a discretionary extension or further extension of time must be made on F52 accompanied by the fee of £135 and evidence explaining the circumstances under which the period for filing was missed.
10.33
A valid request for an extension of time will normally include a F52, fee and evidence. If not, Formalities must contact the applicant/agent and instruct them to file the omitted documents. A period of one month should be given and the applicant/agent should be reminded that if the document is not filed the application will remain withdrawn.
10.34
Evidence - it is for the applicant to provide whatever evidence he believe will best support their case. Evidence can be accepted in the form of a letter or a sworn statement (Statutory Declaration or Affidavit) or a Witness Statement or in any other form.
A statutory declaration if provided must be signed in the presence of a solicitor or a Commissioner of Oaths and prepared in accordance with The Statutory Declarations Act 1835 and r.87 of The Patent Rules 2007.
A Witness Statement should be made and subscribed in accordance with the Civil Procedure Rules (notably rule 32.8 and the associated Practice Directions). (see example Witness Statement at Annex 10F - Witness Statement)
10.35
Formalities must never give advice on the acceptable content of evidence. It should be an accurate record of the facts relating to the late filing, from a person taking responsibility for the prosecution of the application. If this responsibility was shared, each person may supply separate evidence in support of the request in order that the full facts can be made known to the Office.
10.36
As a general rule the evidence should display that, at the time the period expired, the failure to meet the time period was unintentional. This is consistent with the test for reinstatement under s.20A. However, as rule 108 does not set out a statutory test for extensions of time discretion may be exercised favourably in appropriate circumstances even if the unintentional test does not appear to have been met. (see MoPP 123.37)
10.37
If the evidence shows that the failure to meet the time limit was unintentional discretion must be exercised favourably regardless of whether there was a continuing underlying intention to proceed. Further evidence may be requested but the fee on the F52 cannot be refunded.
10.38
If an extension is granted the outstanding item must be filed by the end of the extended period if it has not been filed with the Form 52.
10.39
When a request for an extension has been filed, the application should be forwarded to the Casework Lead, for consideration. The Casework Lead should record the filing of the Form 52 by using function REG FIL which creates a Register Entry. The code for a Form 52 filed for a discretionary extension is 52.1.
10.40
More than one time period on the same application may be extended by filing a single F52 if the extension to be allowed is to a common date.
10.41
Each individual request for extension must be considered on its own merits. However, if the same applicant requests extensions on more than one co-pending applications (including a parent and its divisional), the Casework Lead may agree to consider the requests jointly.
10.42
If the request is allowed the letter at Annex 10E - Letter allowing Rule 108(3) request should be issued and the decision recorded on using REC F52. Guidance on processing a Form 52 for a discretionary extension can be found in Formalities guidance training notes.
10.43
Any discretionary extension under rule 108(1), or (3) may be subject to conditions as directed by the Comptroller - usually ‘3rd party terms’ see 10.67. In these circumstances we need to notify the applicant/agent by letter of the terms and conditions under which the extension is allowed as these may vary.
10.44
Any request for a discretionary extension whether restricted or not should be referred to either the Head of Casework & Training or, if it relates to the rule 30 period, to the Patent Examiner or Deputy Director.
10.45
Reinstatement is available where an application has been refused or withdrawn or treated as such for failure to comply with either a specified time limit or a time limit prescribed in the Act or Rules.
10.46
Where an applicant has failed to comply with a requirement within the time limit and has not requested an automatic extension of the time period under rule 108(2) their application is deemed to have been withdrawn.
10.47
S20(A) provides for the reinstatement of a withdrawn application where no further extension of time is available. Reinstatement must be requested within 12 months of the effective date of termination
10.48
However, reinstatement is not available if an extension of time is still available to the applicant by filing a Form 52, or if the period in question relates to proceedings before the Comptroller or to a late priority claim. The time allowed for requesting reinstatement itself is not extendable.
If an extension of time is still available the agent/applicant should be informed as soon as possible.
10.49
A request for reinstatement will be considered when the following are filed:
(a) F14 and fee.
(b) Evidence explaining the circumstances surrounding the failure to meet the time limit. Evidence to support a request can be accepted in the form of a letter, a sworn statement (Statutory Declaration or Affidavit) or a Witness Statement or in any other form. It is for the applicant to provide whatever evidence he believes will best support their case.
A statutory declaration if provided must be signed in the presence of a solicitor or a Commissioner of Oaths and prepared in accordance with The Statutory Declarations Act 1835 and r.87 of The Patent Rules 2007.
A Witness Statement should be made and subscribed in accordance with the Civil Procedure Rules (notably rule 32.8 and the associated Practice Directions). (see example Witness Statement at Annex 10F - Witness Statement)
10.50
The outstanding requirement may also be filed at this stage; however this is not a necessity, as a further period for filing this document will be provided if reinstatement is allowed. This will normally be two months but a longer period may be provided if necessary.
10.51
A valid request for reinstatement must include (a) and (b). If either is absent, Formalities must contact the applicant/agent and instruct them to file the omitted documents. A period should be specified for filing evidence (normally 2 months) and the applicant/agent should be reminded that if evidence is not filed the application will remain withdrawn and the request cannot be considered.
10.52
A minute should be sent to the Casework Lead for REG FIL action which will create a journal entry and where appropriate close the ‘third party terms window’ – see 10.67. This should be done in all cases where a Form 14 has been filed regardless of whether all other documents have been filed or not.
10.53
When a request for reinstatement has been filed, the application should be referred to the Head of Casework & Training, via the Casework Lead, for consideration.
10.54
Each individual request for reinstatement must be considered on its own merits. However, if the same applicant requests reinstatement of more than one co-pending applications (including a parent and its divisional), the Head of Casework & Training may agree to consider the requests jointly. A separate Form 14 and appropriate fee is required on each application. If there are multiple applicants any one or more of them may apply for reinstatement without the others [S.20A(4)].
10.55
Formalities must never give advice on the acceptable content of any evidence. It should be an accurate record of the facts relating to the late filing, from a person taking responsibility for the prosecution of the application. If this responsibility was shared, each person may supply separate evidence in support of the request in order that the full facts can be made known to the Office.
10.56
The evidence must display that, at the time the period expired, the failure to comply was unintentional, a “change of mind” is not sufficient. If the explanation of the events leading to the filing being missed is unclear, the request for reinstatement may be declined. Further evidence may be requested but the fee on the F14 cannot be refunded. A continuing underlying intention to proceed with the application does not always mean the failure to comply with the time limit was unintentional. An explanation of how the Office defines unintentional can be found in MOPP 20A.13 (Anning’s Application BO/374/06.
10.57
A request for reinstatement may arrive before Formalities have terminated the application on COPS If the application is deemed to be withdrawn the processing status must be set as TERMINATED before the reinstatement request can be processed.
10.58
If the Head of Casework & Training considers that the request for reinstatement under s.20A is allowable, either they or the Casework Lead will write to the applicant/agent, using the letter at Annex 10G - Letter allowing reinstatement, informing them of the decision, and issuing a Reinstatement Order (Annex 10H - Reinstatement Order). The Head of Casework & Training or Casework Lead completes the relevant formalities action by recording the decision to allow reinstatement using the function REC F14. This creates a journal entry and changes the processing status of the application back to what it was prior to termination.
10.59
If the application has been published and its termination advertised in the journal then reinstatement is subject to mandatory 3rd Party Terms under section 20B and the application must be referred to the Head of Casework & Training for action See 10.67.
10.60
The Reinstatement Order will provide the applicant with a period in which to meet any outstanding requirement which has not already been met and has led to the application being treated as withdrawn or refused [s.20A(7)]. This will normally be two months. The application will be diarised for a period of 10 weeks from the date of notification to the applicant/agent to await the outstanding requirement. When the outstanding requirement is filed normal processing of the application will resume.
10.61
The outstanding requirement must be filed within the period specified in the Reinstatement Order. An extension of time may however be requested in writing under the provisions of s.117B. If the diary expires and the item has not been filed, the application is again treated as withdrawn [s.20A(9)].
10.62
Where an application is treated as refused for failure to respond to an examination report and is subsequently reinstated after expiry of the compliance period, a new period for responding to the examination report and a new period for overall compliance will be specified. This will allow the applicant to respond with amendments to bring the application into compliance. This follows the decision in Ali et al’s Patent Application BL O/264/10. The period specified will usually be 2 months from the date of the reinstatement decision. This new compliance period may then be extended under the standard provisions of rule 108 if necessary.
Refusal of request for reinstatement
10.63
If the Head of Casework & Training decides that the reinstatement request should be refused (either on the basis of the evidence or because it has been filed too late) they will then inform the applicant by letter setting out the reasons for the refusal and giving them a period of one month from notification to request a hearing. A diary date of six weeks from the date of notification should be set.
Where a reinstatement request is filed outside the prescribed time period of 12 months from termination the following letter should be issued (Annex 10I - Late Filed Reinstatement letter). To give the applicant opportunity to request continuation of the application under rule 107 before a refund of the fees is made.
10.64
If nothing is heard from the applicant by the end of this period this period then the application remains withdrawn. Head of Casework & Training will issue a formal decision and record the refusal of the reinstatement request using function REG F14 which will create the required journal entry.
Any fees paid on unactioned forms for example F9A, F10 should be refunded but Form 14 cannot be refunded.
10.65
If the agent/applicant indicates that they wish to withdraw or not continue with their request for reinstatement this is recorded using the function REG F14.
10.66
If the agent/applicant requests to be heard then the Head of Casework & Training, in consultation with the Head of Administration, will advise Tribunals Section who will arrange a hearing and appoint a hearing officer.
Applying third party terms to an application
10.67
Third Party Terms apply to a reinstated application if the application has been published (either by the UK or by WIPO) and has been advertised as withdrawn.
10.68
Third Party terms are special terms to protect the interests of third parties. This means that if a patent is eventually granted, the applicant will have limited legal rights for the period when the application was not in force - this time is referred to as the ‘third party window’ and anyone who copied or used the invention in good faith while the application was not in force, may continue to do so because they had genuine reason to believe that the patent application had lapsed.
10.69
Any application divided out of a parent [s.15(9)] where these Third Party Terms have been applied will also be subject to them for the period that the parent was not in force. If the divisional application is granted then a special certificate will be required. see 10.76
10.70
Third Party Terms relate only to cases withdrawn and advertised as such after publication. For example, failure to file patents F10 within the six month r.28 period and the late entry into the National Phase of a s.89 application (see 10.71 below).
Application of third party terms - late entry to National Phase
10.71
When a request for reinstatement concerns a PCT application’s late entry into the National Phase [r.66(1)] third party terms may need to be applied. This is because details of the application will have been published either by the Office ( ‘A’ Publication) or by WIPO. Subsequently, the application may have been terminated and this fact published.
10.72
PCT applications entering the national phase in the UK under PCT Chapter I or II, are reported in the journal within around 6 weeks of receipt. Allowing for a request for an automatic extension of time for national phase entry, any third party following the progress of such an application could reasonably expect the case to be published as directly entering the national phase within 4 months of the relevant deadline (31 months from earliest declared priority date) for entering the national phase.
Therefore if late entry is allowed later than 35 months from the earliest date, then 3rd party terms should be applied.
10.73
The only exception to this would be where the PCT application also designated GB as part of the European regional designation. Although the EP region is automatically designated, the applicant has to specify which particular states are designated in the EP phase. Under these circumstances the case would have 31 months to enter the PCT regional phase in the EPO. If it failed to do so then, around 9 months from the period allowed for entry into the regional phase, the EPO will publish their PCT application number as having failed to enter the regional phase. After noting that a PCT application has not been advertised in the journal as entering the UK national phase and, where appropriate, the equivalent EP patent has been advertised in the European Patent Journal as not entering the EPO regional phase, a third party may have acted in good faith and begun to use the invention, believing the application withdrawn. In such a case if late entry to the national phase is allowed later than 40 months from the earliest date then 3rd party terms should be applied.
10.74
The Head of Casework & Training will decide in each case whether reinstatement of the application should be subject to terms to protect the interests of third parties under section 20B.
10.75
If third party terms apply the relevant label should be added to the dossier cover and the following warning imported into the dossier: the TOC should be annotated 3rd Party Note.
Note
This application has been reinstated. If and when it this application is marked in order for grant it must be referred to the Casework Lead, who will liaise with a PLO, in order that a special certificate may be prepared. A check should also be made to see if any divided applications have been filed. If they have, consideration will need to be given as to whether a special Certificate should also be applied on the divided applications.
10.76
When the examiner marks the application in order for grant, any application bearing the above warning label should immediately be forwarded to the Publication Liaison Officer who will prepare a special grant certificate. This will be marked with “SEE ENDORSEMENTS” and will be ribboned and sealed with the third party terms attached to the back of the certificate. (See Annex 10J - 3rd Party Terms for Grant Certificate). The PLO will record their action on the dossier and notify Publishing Section that the special certificate should be issued instead of the one normally produced.
Similar provisions apply to published applications resuscitated after being withdrawn in error. (see 12.94)
Extension of specified time periods (s.117B and rule 109)
10.77
A specified time period is any period of time which is not prescribed by the Patent Rules but is set by the office. This includes, for example, the time allowed for filing formal drawings or replacement pages and the time allowed for replying to a substantive examination report as well as any other time period specified for reply to an official letter.
10.78
A specified time period may be automatically extended under rule 109 by a period of two months or to the end of the compliance period if that is earlier (in this case the applicant should be informed and a note placed on file). The extension must be requested in writing (includes e-mail) and within two months of the time period expiring. The extension is as of right so no special form or any other document is needed.
10.79
The extension must be requested within two months of the expiry of the time period in question and no further extensions to the same time limit can be granted under this rule. They must be requested before the expiry of the already extended period. A dedicated e-mail address PATEOT@ipo.gov.uk is available for receipt of these requests. An automatic response is generated and the e-mails are monitored by a Formalities Examiner.
10.80
A further extension after the ‘as of right’ extension may be given but only if the ‘as of right’ extension has already been requested and the request for a further extension is made before the ‘as of right’ extension runs out. A request for a further extension does not need to be in writing. An extension of one further month is generally allowable but taking into account how long remains of the compliance period. An adequate reason must be given and if it is not, then one should be asked for.
10.81
If no ‘as of right’ extension has been requested or is available then any late response to a substantive examination report should be referred to the Patent Examiner to determine whether to refuse the application or to accept the late response. This includes responses received within the two months extension period but without a written request to extend the period.
Other Extensions of time [rule 107, 110 and 111]
10.82
Any queries concerning receipt of mail or postal disruptions (for example by strikes or adverse weather) should be referred to the manager of Document Reception section. (see 12.41)
10.83
If Document Reception section confirms that a document was not filed in time to meet a prescribed or specified deadline, the Formalities Examiner should instruct the applicant to request an extension of time under the appropriate subsection of r.108 or r.109 or alternatively under rule 111. (see 12.47)
10.84
For extensions of time under Rule 107 (Correction of Irregularities) or Rule 111 (failure in a communication service) see Chapter 12 - 12.36 - 40.