IP Cases & Articles

Amendments to the Patents Rules 2007 

On 02 August 2016 the UK Intellectual Property Office (UKIPO) published the UK Government's response to a consultation seeking views on a number of proposed amendments to the Patents Rules 2007.

The amendments were proposed with the intention to simplify the patent application process, improve the clarity of the legislation and reduce the procedural burden upon applicants.

It is expected that the amendments coming into effect in October 2016 and April 2017 will lead to an increase in the efficiency of the application process, as well as a closer alignment of UK patent law with that of foreign jurisdictions.

In view of the responses received from businesses, patent attorney firms and representative organisations regarding the proposals, the government has decided to implement each of the proposed amendments, with the first group of changes coming into effect on 01 October 2016.

These amendments, and the consequences of their introduction, are discussed below.

Proposal 1 (effective 01 October 2016)

Introducing a notification of intention of grant, thereby removing the need for applicants to foreshadow divisional applications.

This is perhaps the most significant of the amendments, as it provides a guaranteed notice period in which a divisional application may be filed. As divisional applications must be filed before grant of the parent application (and also before a statutory deadline calculated in Rule 19 UKPA), this amendment addresses the problem of an application granting before the applicant has the chance to file any desired divisional applications.

Previously, it has been the practice to request (when replying to an office action) that grant be delayed to allow an opportunity to file a divisional; however this is not an ideal solution for a number of reasons. For example the applicant may not remember to request a delayed grant, or the request could simply be missed by the examiner who would then proceed with the grant process. In either case, the grant of the patent would need to be rescinded in order to allow the filing of a divisional; this is a cumbersome process that both the applicant and the UKIPO would prefer to avoid.

Having a well defined period in which the applicant has the opportunity to file divisionals before grant simplifies the process and reduces the amount of correspondence that may be necessary between the examiner and the applicant. A notice period of two weeks was initially suggested, but it has been agreed that four weeks or a month is more appropriate upon review of the received responses.

While it is noted that this will result in a delay of the grant of an application, this is not regarded as a major issue as the delay will be a maximum of one month and infringement or the discovery of new, citable prior art documents is unlikely to occur in such a short period.

Proposal 2 (effective 06 April 2017)

Prohibiting the use of omnibus claims except where absolutely essential.

Omnibus claims are claims that refer to portions of the specification to define a scope of protection, rather than defining the subject matter directly.

This amendment is not expected to affect a large proportion of applicants; for example, the majority of granted patents in the UK originate from European filings (where omnibus claims are also only allowed where absolutely necessary) and no requests to add omnibus claims to European-originating applications when entering the UK national phase have been received since 2011.

In view of this amendment, omnibus claims will only be allowed where technical features of an invention cannot be clearly defined by words, mathematical/chemical formulae or any other written means.

Proposal 3 (effective 01 October 2016)

Simplifying the period in which reinstatement of a patent application can be requested.

This proposal contained two options for simplifying the reinstatement process; an administrative option and a legislative option.

Reinstatement is a mechanism for the recovering of an application that has been terminated as a result of an unintentional failing to meet a deadline on the part of the applicant. The previous deadline for requesting reinstatement was the earlier of two months from the removal of the cause of non-compliance or 12 months from the date of termination; therefore the applicant may often benefit from a longer reinstatement period under the amended rules.

The proposed administrative option was an update to Patents Form 14 to allow the user to declare the date on which the cause of non-compliance was removed, a date which would be relied upon unless evidence suggests this date is incorrect, while the proposed legislative option was that Rule 32(2) would be amended such that requests for reinstatement must be made within 12 months of termination of the application.

It was decided that the legislative option was the best way to proceed; this was the option that was seen to provide the most clarity and legal certainty for both applicants and third parties. The simplification of the time period for reinstatement is beneficial to third parties, for example as it will be easier to determine when an application has lapsed and the invention may therefore be worked without the risk of a patent for the subject matter later being granted.

Proposal 4 (effective 01 October 2016)

Allowing extensions to the period for filing an address for service.

A two month extension may now be requested for filing an address for service if the deadline is missed, an amendment that adds some flexibility to addressing a minor administrative issue and provides a fairer application process for applicants.

Proposal 5 (effective 01 October 2016)

Relaxing the formal requirements for drawings to allow applicants to provide shaded drawings and photographs.

This amendment simply brings the legislation into alignment with current practice; examiners at the UKIPO have commonly accepted these formats so long as they are clear and reproducible for some time now.

Proposal 6 (effective 06 April 2017)

Removing the requirement for patent holders to notify the UKIPO each year of the address they wish to use to receive renewal reminders.

The UKIPO will now continue to use the address currently on record unless notified of a change, removing the need to contact the UKIPO with the address each year even if it does not change.

Proposal 7 (effective 01 October 2016)

Clarifying when applicants can make amendments to international patent applications entering the UK national phase.

This amendment has no substantive procedural effects; a new Rule 66A will be introduced that clarifies when PCT applications may be amended upon entry to the national phase.

Proposal 8 (effective 01 October 2016)

Clarifying the requirements concerning changes of names and addresses.

This is another amendment that has no substantive procedural effects; Rule 49 will be amended to clarify its meaning without modifying current practice.

Patents Form 20 will also be updated so that the user can specify whether they are correcting an error or updating information in view of a change in circumstances.

Proposal 9 (effective 01 October 2016)

Correcting the drafting of the rule concerning advertising amendments made during infringement and revocation proceedings.

This is an amendment that will bring Rule 75 into line with Section 75(1) of the Patents Act. As a result of this amendment, it is made clear that the UKIPO may exercise their discretion in advertising amendments made to a patent during infringement or revocation proceedings. Guidance will be provided in the Manual of Patent Practice as to which amendments should be advertised; it is anticipated that only amendments so insignificant that no-one could be expected to want to oppose them will not be advertised.

Proposals 10 & 11 (effective 01 October 2016)

Removing the requirement for triplicate copies of international applications when filed with the UKIPO in its function as a receiving office for PCT applications & removing the requirement for duplicate copies of Patents Form 51.

Each of proposals 10 and 11 are amendments that reflect the nature of electronic filing methods – no longer are multiple physical copies required to be kept by different parties as digital copies are used instead.

Benefits to applicants

These amendments should be welcomed by applicants, as they appear to constitute a clear improvement to the application process in terms of clarity, simplicity and the amount of work required.

The fact that UK legislation will be more closely aligned with foreign jurisdictions is also advantageous to applicants, as this will streamline the application process further when applying for patent protection in multiple regions.

Useful link

UKIPO guidance note 'Changes to Patents Rules on 01 October and 06 April', published 01 September 2016: http://dycip.com/ukipopatentrules

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