Upcoming changes to the UK Patents Rules 2007

19 September 2016

The UK Patent Office has published a number of changes to the UK Patents Rules, some of which will be coming into effect from 1 October 2016 and others which will apply from next April. Here, we explain some of the main changes and their impact on day-to-day prosecution of UK patent applications.

Notification of Grant

From 1 October, the patent office will begin giving applicants advanced notice of grant of their patent application by issuing a Notification of Intention to Grant communication.

Under the current system an applicant may be given little or no notice prior to grant of their application. This means that, once they are made aware that their application has granted, it is too late to perform certain actions, most notably to file a divisional application. This uncertainty has led to the common practice of asking the patent office to informally notify the applicant before an application is granted if the need for a divisional application is envisaged.

This new communication mirrors the practice under the European system of issuing an Intention to Grant letter. However, in contrast to the European system, no specific action is required on the part of the applicant in response to this new communication. 

The change will provide applicants with greater legal certainty as to the date on or after which the application will grant, meaning that, if desired, applicants will have the period set out in the communication to file a divisional application.

Reinstatement

The period for requesting reinstatement of a UK patent application has been reviewed and will be simplified from 1 October. Under the current rules, the date on which the discovery is made that a deadline has been missed is significant in calculating the period for requesting reinstatement.

The new period will simply be 12 months from termination of the application. This means that from 1 October, reinstatement may be requested in relation to any patent applications that have previously been terminated, as long as no more than 12 months have passed since the date of termination. 

Requirements for Formal Drawings

From 1 October, the requirements relating to technical drawings included in a patent application will be relaxed somewhat. With the change, drawings may now include shading, providing the shading does not obscure other parts of the drawing. Black and white photographs may be provided as technical drawings, providing they are clear and capable of reproduction. 

This change is made to bring the legislation more in line with current practice at the patent office. It should be considered however that the patent office will continue to reject drawings and photographs if they are not suitable for publication.

Amending International Patent Applications upon GB Phase Entry

A change is being introduced to the Patents Rules to clarify when an applicant can voluntarily amend an international application that has entered the GB national phase. 

In the first scenario, when an international search report (ISR) has issued before entry to the GB national phase, an applicant can file voluntary amendments to the application from national phase entry until the first examination report has been issued. In the second scenario, when no international search report has been issued upon national phase entry, an applicant may file voluntary amendments from the date of issue of the first GB search report or international search report until the first examination report is issued.

This rule clarification simply brings the legislation more into line with the current patent office practice.

Other changes

The Patents Rules have also been updated to streamline a number of procedural matters and to again bring the legislation into line with accepted practice.

Omnibus Claims – from 6 April 2017

Under the current system, UK patent applications often include a claim which is worded so as to refer generally to the description and/or drawings included in the patent application. Such claims are known as omnibus claims. 

From 6 April 2017 it will generally no longer be possible to include omnibus claims in UK patent applications, except in some very limited circumstances which are essentially where the invention cannot be clearly defined by any means other than a reference to the description and/or drawings.

The reason for this change is that omnibus claims are in practice sometimes considered to be difficult to understand, particularly in terms of the scope of protection defined by these claims. This can make it difficult for parties to know if they are likely to infringe a competitor’s patent. This legislative change will also bring the UK closer to the requirements of the EPC and the PCT. 

In line with this change, from 6 April 2017 it will also no longer be possible to amend a granted patent to insert an omnibus claim. However, the presence of an omnibus claim in a granted patent will not be a ground to revocation. Any granted patent including such claims will remain valid. 

Andrew Sunderland

Andrew Sunderland

Senior Associate

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