Home > Insights > Changes to UK Patents Rules
23 September, 2016

The UK Intellectual Property Office (UKIPO) has published details of amendments to the Patents Rules 2007, which can be found here.

These Rules were proposed after public consultation and are designed to simplify and clarify the prosecution of a UK patent application. Most of the new Rules come into effect on 1 October 2016. However, two changes do not come into effect until 6 April 2017, as indicated in parenthesis below.

Notification of intention to grant and warning to file divisionals

Under the old Rules, a UK patent application could potentially be granted without notice if all objections raised in an examination report were addressed. Since a UK divisional application cannot be filed after grant of the parent, there was a danger that an application could be granted without warning, thereby preventing the filing of any desired divisional applications.

However, under the new Rules, the UKIPO will issue a Notification of Intention to Grant so as to give the applicant notice of upcoming grant and to provide enough warning to file any desired divisional applications. The notice period will usually be one month, but two months’ notice will be provided if the application is found to be allowable at the first examination. Nonetheless, the compliance period for putting a UK divisional application in order for grant is determined by the compliance period for the parent application.Therefore, we would advise that UK divisional applications are generally filed as early as possible so as to allow sufficient time for multiple rounds of examination, if required.

Simplifying the time period for requesting reinstatement

If an applicant fails to meet a deadline during prosecution of a UK application, the application will be terminated. However, the UKIPO has a relatively generous procedure to reinstate the application if the applicant can show that missing the deadline was “unintentional”. Previously, the deadline for requesting reinstatement was the earliest of (i) two months from the date of removal of the reason for missing the deadline, and (ii) 12 months from the termination date. Determining the date of the removal of the reason for missing the deadline is not always straightforward, and can cause some confusion over the actual deadline for requesting reinstatement.

The new rules simplify the deadline for requesting reinstatement to simply be 12 month from the termination date, irrespective of the date of removal of the reason for missing the deadline. This rule also applies to previously terminated applications where the 12 month period has not yet ended. Therefore, some applications that were no longer able to be reinstated under the old Rules, due to the passing of more than two months since the removal of the reason for missing the deadline, may be eligible for reinstatement under the new Rules, if 12 months have not yet passed since termination.

Amending international patent applications upon entry to the UK national phase

When an international (PCT) application enters the UK national phase, it is possible to make voluntary amendments to the application. One reason this might be done is to address issues that have been raised in the international search report. However, the old Rules are unclear as to when such amendments can be made.

Therefore, the new Rules explicitly allow the filing of voluntary amendments up until the date of issue of the first examination report. However, the applicant must wait until the first search report is issued on the application, whether this is the international search report or the UK search report. Usually, the international search report is issued before national phase entry, in which case voluntary amendments can be filed on entry into the UK national phase.

Relaxing the requirements for formal drawings

Previously, the Rules (Schedule 2, Part 3, Paragraph 15) stated that “Drawings must comprise black lines and must not be shaded”, and photographs were not allowed. This was to ensure that the drawings could be easily reproduced electronically. However, with modern technology, this rule has become outdated, and the UKIPO has often taken a pragmatic view of allowing drawings not conforming to these Rules. Under the new Rules, shading and black and white photographs are now allowable, provided that they are clear and capable of reproduction.

Allowability of omnibus claims (6 April 2017)

An unusual feature of many UK patents is the use of “omnibus” claims, often at the end of the claim set. These claims generally claim the invention by reference to the description or drawings. As an example, an omnibus claim may recite “The apparatus substantially as herein shown in the figures”, or similar. However, it can be difficult for third parties to ascertain the scope of omnibus claims. Furthermore, such claims are not found in most other jurisdictions: at the European Patent Office they are only allowable “when they are absolutely necessary”, and omnibus claims are completely disallowed under US patent law.

Under the new Rules, the allowabillity of omnibus claims in the UK will more closely match that at the EPO, and will only be allowed if “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”. This will all but signal the end of the omnibus claim.

Further amendments

The new Rules provide some further simplifications that are perhaps of less interest to applicants as they refer to procedural matters. These simplifications include: providing a two month extension to the term for providing an address for service; relaxing the need to annually update the address to be used for renewal reminders if it differs from the registered address (6 April 2017); no longer requiring multiple copies of certain documents; no longer requiring the UKIPO to publish minor amendments made during infringement and revocation proceedings; and clarification of the requirements when registering a change of name or address.

For more information on the changes to UK Patents Rules please contact Jo Pelly, or your usual Boult Wade Tennant adviser.