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Changes to UK Patents Rules

Keltie LLP

K2 IP Limited

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A plurality of omnibuses *

Earlier this year the UKIPO ran a consultation on proposed changes to the Patents Rules. The government is now bringing the proposed changes into force with some adjustments following comments received. The reasons behind the changes are to increase the flexibility of processes, to bring more legal certainty and to reduce administrative burdens.

The changes will be brought into force on 1 October 2016 and 6 April 2017 and are summarised below.

Intention to grant notification (from 1 October 2016)

The UKIPO will start to issue notifications of intention to grant. The letter will generally give a month’s notice though 2 months’ notice will be given if it is issued at the first examination stage. IPcopy notes that the advance period has been increased from the originally proposed two weeks which we thought at the time was a bit on the short side. The notification should stop the practice of divisional foreshadowing.

The UKIPO notes that the last patents to grant without receiving such a notification will be issued on 4 October 2016. As a result of the introduction of this process the UKIPO expects very few patents to grant in October. Notifications will be issued under s18(4) of the Patents Act and will be publicly available. Rule 19 of the Patents Rules has been amended.

Time period for requesting reinstatement (from 1 October 2016)

From 1 October 2016 the time period for requesting reinstatement of a patent application that has terminated will be simplified. Applicants will now simply have 12 months from termination of their patent application to request reinstatement.

Address for service (from 1 October 2016)

The period for producing an address for service in the UK, European Economic Area or Channel Islands will now be extendable under Patents Form 52 by two months (on payment of £135).

Formal Drawings (from 1 October 2016)

Shading and black and white photographs will be allowed providing they are clear and capable of reproduction.

Amending on entry to UK national phase (from 1 October 2016)

If an international search report (ISR) has issued by the time national phase entry occurs then voluntary amendments can be made up until the 1st exam report issues. If no ISR is available on national phase entry then voluntary amendments can be made from the date of issue of the ISR or UK search report (whichever issues earlier) up until 1st exam report issues.

Changes to names/addresses (from 1 October 2016)

Patents Form 20 will be revised to include a tick box to indicate whether a user wishes to correct an error or to update information held by the IPO with respect to their name or address.

Advertising amendments (from 1 October 2016)

The Patents Act will be clarified that the IPO has discretion whether to advertise amendments requested by the patent proprietor during post grant proceedings. The IPO notes that this discretion will only be exercised for insignificant amendments.

Copies of documents (from 1 October 2016)

It will no longer be necessary to file duplicate copies of Form 51 (appointing/changing an agent) or to file international applications in triplicate when using the UKIPO as receiving office.

Address for renewal reminders (from 6 April 2017)

It will no longer be necessary to make an annual notification to the IPO of the address to which renewal reminders are sent (where this differs from the registered address for service). The IPO will going forward continue to use the address previously provided.

Omnibus claims (from 6 April 2017)

To bring the UK into line with EPC and PCT requirements it will generally no longer be allowable to include omnibus claims in UK patent applications. They will only be allowed if the technical features of the invention cannot otherwise be clearly and concisely defined using words, a formula or other written means.

Limiting the use of omnibus claims will increase legal certainty for businesses and (* – see photo) will reduce the instances of truly horrific patent puns being made.

Mark Richardson 5 September 2016


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