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23 September 2016
What is changing?
The UK Intellectual Property Office (UK IPO) is introducing a package of changes to the Patents Rules.
The Patents Rules 2007, together with the Patents Act 1977, govern the patent system in the UK. The Rules set out the procedural and administrative requirements which apply to patents and patent applications.
None of the changes affect the Unitary Patent.
The intention is to simplify certain aspects of the law and take account of increasingly electronic ways of working.
When will the changes be brought into effect?
Changes to the allowability of omnibus claims and the address provided for receipt of renewal reminders (see detail below) come into effect from 6 April 2017, all other changes take effect 1 October 2016.
If you would like to discuss any of these changes please contact your usual Withers & Rogers attorney.
There are eleven changes:
Changes effective from 1 October 2016:
Introducing a notification of intention to grant.
Intended to provide greater clarity and legal certainty to the grant process, the UK IPO plan to issue a notification to applicants 4 weeks or 1 month before grant. This allows a clearer picture of the time left to complete certain actions, such as file a divisional application.
Clarifying the period for making a request for reinstatement of a patent application.
When an applicant fails to comply with a requirement of the Act or Rules the application is deemed refused or withdrawn and is terminated. Currently, the application can be reinstated on request either within 2 months of the “removal of the cause of non-compliance” or 12 months from the date of termination of the application.
The date of removal of the cause of non-compliance can be subjective and lead to issues in determining a specific and agreed date. A single deadline for requesting reinstatement of 12 months from the date of termination of the application applies from 1 October 2016.
Allowing extensions to the period for filing an address for service.
Applicants will be able to request an extension to the deadline for filing an address for service of 2 additional months by filing PF52 and paying a fee (currently £135).
The current lack of an extension for this time period is inconsistent with other time periods for providing information about an application and is unnecessarily strict, in that patent applications are refused for a minor administrative issue without there being any opportunity to ask for more time.
Relaxing the formal requirements for drawings to allow applicants to provide shaded drawings and photographs.
This change brings the rules into line with current IPO practice, where black and white and shaded drawings are allowed provided they are clear and reproducible.
Formal requirements for drawings are relatively strict – for example, shading and photographs are not permitted. In many technology areas (biotechnology, heat mapping and others) it is increasingly difficult, if not impossible, to represent an invention using a traditional line drawing. For pragmatic reasons the UK IPO therefore does not usually object to shaded drawings and photographs provided that they are clear and reproducible.
Clarifying the period for making amendments to international applications upon their entry to the UK national phase.
For an international patent application made via the Patent Cooperation Treaty (PCT) and entering the UK national phase, it is not presently clear in the Patent Rules when an applicant may amend their application. A new rule (r.66A) is proposed which will clarify that the application can be amended in the national phase between receipt of either the International Search Report or the UK Search Report and the first substantive examination report being issued.
Clarifying the requirements concerning changes of names and addresses.
Amendment to rule 49(6) clarifies that it relates to both corrections of name and/or address, and also to changes, for example due to a house move.
Correcting the drafting of the rule concerning advertising amendments made during infringement and revocation proceedings.
There is currently a discrepancy between the Patents Act and the Patents Rules regarding advertisement of an amendment to the patent specification proposed during infringement or revocation proceedings. Rule 75 is amended for consistency with section 75(1) to state that advertisement of amendment to a patent in infringement or revocation proceedings is at the discretion of the comptroller.
Since forms and documents are now handled electronically by the UK IPO (irrespective of whether filed on paper or electronically), the following are no longer required:
Triplicate copies of international applications to be filed when using the IPO as a receiving office for such applications.
Duplicate copies of Patents Form 51 to be filed when notifying the IPO of the appointment or change of agent.
Changes effective 6 April 2017:
Prohibiting the use of omnibus claims except where absolutely essential.
Patent claims define in technical terms the scope of the monopoly granted by the patent office. Claims which are drafted to refer to the description and/or the drawings included in the patent specification are known as “omnibus claims”. Since these claims are generalised and do not include technical features of the invention, it can be difficult to determine the scope of protection intended by an omnibus claim.
The use of omnibus claims will be limited to only those instances where the technical features of the invention cannot be clearly defined in words, by a mathematical or chemical formula or by any other written words.
Removing the requirement for patent proprietors to notify the IPO each year of the address for receipt of the renewal reminder.
The IPO will continue to use the address previously supplied as the address for receipt of the renewal reminder until informed otherwise.
Advanced Engineering group
If you require further information on anything covered in this briefing, please contact Carolyn Jenkins (email@example.com; +44 1179 253 030) or your usual contact at the firm. This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Withers & Rogers LLP, September 2016