Dr Andrew Clements

October 2016

Changes effective 1 October 2016

Notification of intention to grant

The UKIPO is to issue advance notification of grant in order to allow patent applicants the opportunity to file a divisional application without the need to recourse to the current practice of “foreshadowing” (i.e. placing on the public record the applicant’s interest in filing a divisional application).

Applicants will be given one month’s notice in most cases, or two months’ notice if the first examination report is a notice of intention to grant (as currently) – thus safeguarding the opportunity to prepare and file a divisional application and, where the first examination report is a notice of intention to grant, the opportunity to file voluntary amendments.

The existing prohibition on filing divisional applications less than three months before the statutory compliance date will be maintained.

The last patents to be granted under the old regime will be granted on 4 October 2016.  Thereafter, the new regime will apply.

Time period for requesting reinstatement

The current deadline for requesting reinstatement of an unintentionally terminated application is considered to be complicated to calculate and potentially confusing by the UKIPO.  As of 1 October 2016, a new 12 month deadline will apply, running from the date of termination of the relevant patent application.

Time period for providing an address for service

All patent applicants must provide an address for service in the EEA or the Channel Islands within two months.  From October 2016, it will be possible to obtain a two-month extension to this period by filing patents form 52 and paying an official fee.

Requirements for formal drawings

From 1 October 2016, the requirements for formal drawings will be relaxed to match current Office practice. In particular, the UKIPO will now allow:

• shading in drawings, provided it does not obscure other parts of the drawing
• black and white photographs, if clear and capable of reproduction.

Amendment of international patent applications on UK national phase entry

The UKIPO has clarified that voluntary amendments can be filed (i) at any time up to filing a response to the first examination report if the International Search Report (ISR) has issued before UK national phase entry, or (ii) at any time between the earlier of the UK search report or the ISR and filing a response to the first examination report if the International Search Report has issued before UK national phase entry.  This rule change is consistent with current Office practice.

Changes of names and addresses

Patents form 20 has been amended to clarify the procedure for providing updates to the names and/or addresses of parties (if changed, having previously been correct).  The same form is used to correct errors in names and addresses.

Advertising amendments made during proceedings

At present, the UKIPO is obliged to advertise any amendments made during proceedings in which the validity of a patent is challenges (i.e. infringement or revocation proceedings).  From 1 October 2016, such advertisement will be at the discretion of the Office, although it is likely that most amendments will be advertised, other than those which are so insignificant that no-one would be expected to want to oppose them.

Relaxation of paper filing requirements

From October 2016 it will no longer be necessary to provide duplicate copies of patents form 51 (used to appoint or change an attorney) or to file international patent application in triplicate at the UKIPO.

Changes effective 6 April 2017

Allowability of omnibus claims

Omnibus claims which refer generally to the description or drawings of the patent application have long been a feature of UK patent practice.  However, the UKIPO considers that the scope of such claims may be confusing and make it hard for third parties to know if they are likely to infringe a competitor’s patent.

From 6 April 2017, omnibus claims will not be allowed in UK patent applications unless the technical features of the invention cannot otherwise be clearly and concisely defined using words, a mathematical or chemical formula or any other written means.

Objections to omnibus claims will be raised by UKIPO examiners for patent applications pending on 6 April 2017 unless the statutory compliance period for that application expires before 6 April 2017.  Other than in these specific circumstances, it will not be possible to include omnibus claims in UK patent applications.

Similarly, it will not be possible to amend a granted UK patent to introduce an omnibus claim after 6 April 2017.  However, the presence of existing omnibus claims in granted patents will have no effect on their validity and will not be a ground of revocation.

Although the UKIPO’s assessment of the improved certainty for third parties arising from this rule change is perhaps overstated, it will bring UK practice into line with the current requirements of the EPC and the PCT.

Address used for renewal reminders

Currently patent owners must inform the UKIPO annually of the address for which any renewal payment reminders are sent (if different from the UK address for service).  This may be the case if the patent owner uses an external annuity service provider.

From 6 April 2017, these annual notifications will not be required.  The UKIPO will continue to use the most recent address on record, until this is cancelled or updated by the patent owner.  Accordingly, this change should reduce the administrative burden on the patent owner.