Forthcoming amendments of the UK Patents Rules 2007 will have an impact on patent practice in front of the UK Intellectual Property Office (UKIPO). The majority of these changes come into effect on 1 October 2016, whilst additional changes come into effect on 6 April 2017.
These changes are being made to increase legal certainty of certain procedures, make procedures more flexible and reduce administration requirements. The changes are summarised below.
One of the changes coming into effect on 1 October 2016 is the introduction of a notification of “intent to grant”: Particularly, amendment of Rule 19 ensures that the UKIPO will now provide advanced notice of the grant of a patent. This will be done by issuing a communication that informs the applicant that the application meets all the requirements for grant and therefore will proceed to grant on or after a specified date. This date will typically be 1 month before grant or 2 months if issued as a first examination report.
The change will set out a clear time frame to file divisional applications before the grant of an application therefore preventing “foreshadowing” of divisional applications. Patents granted on 4 October will be the last to be granted without advanced notice of grant.
It is to be noted that applicants will still be required to file divisional applications by at least 3 months before the compliance date and before the grant of the earlier application.
Also coming into effect on 1 October is an amendment which will simplify the time period for requesting reinstatement of a patent application. Currently Rule 32(2)(a) recites the current possible period of “two months beginning immediately after the date on which the removal of the cause of non-compliance occurred”. This will be removed and a period of 12 months from termination will be allowed to request reinstatement. This will apply to any patent application that has been terminated as long as 12 months has not passed since termination.
This change is a move away from the practice of the EPO and is for the benefit of clarity and objectivity for the applicant and any third parties.
Another welcome change is the relaxation of requirements for formal drawings, with shading now being allowed in drawings provided that it does not obscure other parts or features. Black and white photos will also be permitted but only if they are clear and reproducible.
For UK national phase applications arising out of the PCT process, amendments to the Patent Rules aim to clarify when voluntary amendments can be made in response to reports issued by the international authorities, therefore speeding up the application process.
Further changes are intended to clarify the process for changing a name or address, remove the requirement for multiple copies of certain documents and also clarify that UKIPO has the discretion over whether to advertise amendments made during proceedings, for example amendments to avoid revocation.
Changes that will come into effect in April 2017 will affect the allowability of so called “omnibus claims” (claims referencing the description and/or drawings). From 6 April 2017, UKIPO examiners will raise objections to omnibus claims in pending applications, and such claims will only be allowed if technical features cannot otherwise be described. It will also not be possible to insert omnibus claims post-grant.
This is intended to help clarify the scope of protection of a patent for third parties. Patent Applicants should consider whether their existing patent applications should be amended before 6 April 2017 to include omnibus claims.
If you would like further information about the changes to UK patent practice, please contact one of the Secerna attorneys.