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UKIPO Consultation: Proposed Changes to the Patents Rules

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ConsultationThe UKIPO has released a consultation on proposed changes to the Patents Rules. The deadline for making comments is 22 April 2016 (at 11:45pm). Eleven different changes are proposed which range from the helpful (providing a notice of intention to grant) to the nerdier end (removing the need to paper forms in triplicate) of the spectrum.

A summary of the various changes is provided below. The proposed changes are geared towards simplifying aspects of the patents legislation and should reduce the burdens on businesses and the IPO.

Intention to grant notification

Currently when a UK application is put in order for grant, the Examiner can move directly toward granting the application. Applicants cannot tell when the IPO intends to grant the application and will only become aware when they receive a letter that grant has occurred.

This lack of knowledge about the grant date can cause issues where the applicant is considering filing a divisional patent application (since such divisional applications need to be filed before grant of the parent application occurs).

As a workaround, applicants sometimes highlight to the Examiner that they may want to file a divisional application and request the grant is postponed until they’ve had a chance to file (the practice of “foreshadowing”). This workaround sometimes fails however if the IPO do not notify the applicant as requested. According to the consultation this has even lead in some extreme cases to grant being rescinded.

The consultation therefore proposes to introduce a practice of issuing notification of the date on which the patent will be granted. This would bring the UKIPO into line with other patent systems such as Europe. The notification would happen on all applications which have met the requirements of grant. No action would be needed from the applicant in response to the notification but it would provide clarity on the cut off for filing divisional applications.

In most circumstances the applicant will only be given a short window warning of grant. While IPcopy understands the desire not to delay grant, the suggested two week window seems a little on the short side. Such a period has to cover a representative receiving the notification, reporting it to the client, getting the client to provide instructions, preparing the divisional and filing the divisional. For smaller clients there may only be one decision maker who could easily be away from the office for a two week period and so IPcopy would probably suggest a 4 week turnaround to provide a little bit of breathing room.

Omnibus Claims

Omnibus claims, which refer generally to the description and/or drawings of an application, are regarded as leading to a lack of clarity. The consultation notes that the IPO is only aware of a handful of instances where such a claim has been used in anger in a court situation.

As a result the consultation proposes that omnibus claims should only be used in instances where they are absolutely essential (similar to rule 43(6) EPC).

Formal drawings

The UKIPO regards themselves as being fairly strict on the formal requirements for drawings. In IPcopy’s experience the UKIPO seem pretty flexible and are normally happy to talk through an objection when it arrives to point out just what needs changing.

In any case, the consultation proposes that drawings with shading and drawings with black and white photographs will be allowed as long as they are clear and reproducible.

Amendments to PCT applications entering the UK national phase

It is proposed to clarify when PCT applications entering the UK national phase can be amended. Essentially it is proposed that applications can be amended at any time up to issue of substantive exam (in cases where the ISA has sent an international search report) or at any time between the UK search report and issue of substantive exam (in cases where the ISA has not sent an international search report).

Other changes mentioned in the consultation are:

– Clarifying the period for making a request for reinstatement of a patent application. An administrative option and an alternative legislative option are suggested here. The admin option comes with a draft updated Patents Form 14 as part of the proposal.
– Allowing extension to the period for filing an address for service (currently a missed deadline, a minor administrative task, can result in a patent application being refused)
– Removing the requirement for patent proprietors to notify the IPO every year with an address for renewal reminders. This proposal comes with a suggested adjustment to Patents Form 12.
– Clarifying requirements concerning changes of names and addresses. This proposal comes with a suggested adjustment to Patents Form 20.
– Correcting the rule concerning the advertising of amendments made infringement & revocation proceedings. There is currently a discrepancy with section 75(1) of the Patents Act
– Removing the requirement for triplicate copies of international applications (paper filings)
– Removing the requirement for duplicate copies of Patents Form 51

Responding to the Consultation

Responses can be emailed to consultation@ipo.gov.uk or sent by post to:

Sarah Barker
Intellectual Property Office
Room 1R33
Concept House
Cardiff Road
NP10 8QQ


Mark Richardson 9 March 2016

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