News & Resources

20.09.16

UK Practice Update: Patents Rules

The UKIPO has introduced important changes to the Patents Rules, which govern the procedural aspects of the patent system in the UK. These changes will affect GB applications and the GB national phase of international PCT applications (but not GB designated European applications which will continue to be administered by the EPO). The following is a summary of the important changes.

 

Notification of intention to grant

From 1 October 2016, applicants will receive a letter notifying them of when the UKIPO intends to grant their patent application. Under current practice, the UKIPO only notifies applicants of its intention to grant if the application meets all the necessary requirements at the first examination. While this procedure will continue, the UKIPO will also notify the applicant of its intention to grant any GB application, typically issuing the letter with one month’s notice.

This new notice is particularly important for deciding whether to file divisional applications, the filing of which must precede the grant of the parent GB application. Under current practice, applicants have to “foreshadow” most divisional applications, which involves requesting an examiner to give an informal warning of when an application may grant. By guaranteeing a timeframe before grant, the new notice provides applicants with an official minimum timeframe to decide whether to file a divisional application on the basis of any GB application.

 

Reinstatement request

From 1 October 2016, the UKIPO will be updating the time period for requesting reinstatement of an application. An application which has terminated as a result of an unintentionally missed deadline can be reinstated to have the same rights it had before its termination. At present, the time period for requesting reinstatement is dependent on multiple of factors. The update will simplify the current practice by setting the time period for requesting reinstatement to a fixed twelve-month period from the date of termination.

We note that if you need to reinstate your application, we recommend requesting reinstatement as soon as possible. This is because the law does not consider a third party to be an infringer if that third party has proceeded to make, use or sell the invention during the termination period and then continues to do so following the reinstatement of the application. The law therefore prevents proprietors of reinstated applications from enforcing their rights against such third parties.

 

Requirements for drawings

From 1 October 2016, the UKIPO will be relaxing its requirements for the drawings included in applications. Under current practice, the UKIPO only permits black and white line drawings, but the updated rules will allow applicants to submit figures that include shading, as well as black and white photographs. We note however that the UKIPO continues to refuse colour figures.

 

Omnibus claims

From 6 April 2017, the UKIPO will generally no longer accept claims known as ‘omnibus’ claims. Omnibus claims simply refer to the drawings and description of an application without stating any specific technical features, typically being drafted as follows: “A [product/process] substantially as described herein with reference to the accompanying drawings”.

The UKIPO have indicated that such claims are unclear and will only be allowed under exceptional circumstances. We note that omnibus claims in patents granted before 6 April 2017 will remain valid.

If you would like to discuss how any of the above could affect your patent or would like any more information, please contact Andy Cloughley at andycloughley@mskpatents.com .

Share this page:
Back
In this section