IP Information & News

Welcome changes to the patent rules

Earlier this year, the UK government published a consultation seeking comments on a set of proposed changes to the Patent Rules 2007. All of the proposed changes were welcomed by the respondents. Overall, they seek to clarify the rules and simplify many procedural aspects of patent prosecution, as well as creating greater legal certainty for applicants and third parties. The government has now confirmed the dates from which the rule changes will come into effect. The changes to the Patent Rules are summarised below.

From 1 October 2016:

  1. Introducing a notification of intention to grant The UKIPO will now issue advance notice of grant, giving applicants one month’s notice (or two months’, if the notice is issued as the first examination report). This change will bring greater clarity and certainty to the grant process and also provides a hard deadline for filing divisional applications. Previously, there was no warning before a notice of grant was issued, by which time it was too late to file a divisional application.
  2. Fixing the time period for requesting reinstatement A patent that is treated as refused or withdrawn may be reinstated. At present, the deadline for requesting reinstatement is the earlier of “two months beginning immediately after the date on which the removal of the cause of non-compliance occurred” or “12 months from the date on which the application was terminated”. From 1 October 2016, the deadline for requesting reinstatement, in all cases, will be 12 months from the date of termination of the application.
  3. Allowing extensions of time for providing an address for service The strict two month time limit for providing a legal address for service after filing an application will be relaxed, and applicants will be able to request a two month extension of the time limit.
  4. Relaxing the requirements for formal drawings Applicants will now be able to provide shaded drawings and black and white photographs, as long as they are clear and reproducible. This is already followed in current IPO practice and the rules will be amended to reflect this.
  5. Clarifying when amendments can be made to international patent applications entering the UK national phase A new Rule will be introduced to clarify when amendments can be made to PCT applications upon entering the UK national phase. Once the international search report (ISA) has been issued, voluntary amendments will be allowed at any time, from national phase entry until the issue of the first UK examination report.
  6. Clarifying the requirements for requesting changes to names and addresses Rule 49 will be amended to cover both corrections and changes to names and addresses. The relevant form will be provided with a tick box to specify whether the request is to correct an error or to record a change in circumstance.
  7. Removing requirements to provide multiple copies of documents Duplicate copies of forms for appointing a representative will no longer be required. Triplicate copies of PCT applications when filing with the IPO as receiving office will no longer be required.

From 6 April 2017:

  1. Getting rid of the ‘omnibus’ claim Omnibus claims are claims that refer directly to the specification and/or drawings of a patent application. The UKIPO is currently one of the few patent offices that still allow this type of claim. However, from 6 April 2017, omnibus claims will no longer be allowed in patent applications. Patents already granted with omnibus claims will still be valid, but it will not be permitted to add an omnibus claim as a post-grant amendment.
  2. Removing the need to notify the IPO of the address to receive renewal reminders.

At present, patent proprietors are required to notify the IPO each year of the address they wish to use to receive renewal reminders, even if the address is unchanged.

From 6 April 2017, the UKIPO will simply use the address previously provided, unless informed otherwise.

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