As first highlighted by Barbara Rigby on these pages, the UKIPO has been in consultation with the public to find ways to make the UK Patent Rules more user-friendly and more effective in providing legal certainty. We are pleased to learn that the UK Government has been quick to act on the UKIPO’s proposals and the majority of the recommended changes will come into force from 1 October 2016. A second round of changes will take effect from 6 April 2017.
The full official guidance on the rule changes may found here.
The October changes include those of most help to the users of the UK patent system:
- Advanced notification of intended grant – this will give applicants clear notice of the final deadline for filing divisional applications and taking other action before grant.
- Relaxed requirements for formal drawings - the formal requirements regarding drawings will be less onerous, allowing black and white photographs and shaded drawings in addition to black and white drawings, and as such applicants should have fewer drawings objections to deal with.
- Relaxation and clarification of formal requirements for providing addresses for service, recording changes to the authorised representative and recording changes to registered names and addresses.
- Fixed reinstatement period – this will give both applicants and the public complete certainty as to the final deadline for requesting reinstatement of an application that was terminated after a missed deadline.
From 6 April 2017 the requirement for patent holders to notify the IPO annually of the address to which renewal payment reminders are sent (where it differs from the registered address for service) will be removed. Instead, the UKIPO will use the address previously provided, until it is cancelled or updated by the patent holder. This change will reduce an administrative burden for patent holders and give them better access to the UKIPO’s online renewal services.
More substantively, also from 6 April 2017 it will generally no longer be allowable to include omnibus claims in pending UK patent applications. Such claims are vaguely worded and so are considered to lack clarity about the scope of protection provided by the patent. This lack of certainty for the public is considered undesirable and so the UKIPO is intent on ending this practice. This will bring the UK into line with the requirements of the European Patent Convention (EPC) and the practices of other countries. Despite these changes, the presence of such claims in granted UK patents will not render those patents invalid. The guidance is however not clear on the enforceability of those claims after 6 April 2017.
The changes are being made to increase legal certainty, make procedures more flexible, and reduce administrative burdens for patent applicants and owners.