Important changes to the UK Patents Rules are coming into force in two stages: the first on 1 October 2016; the second on 6 April 2017. The Rules define the detailed requirements of an allowable patent application, and the procedures to be followed by the UKIPO and by a patent applicant/owner when applying for a patent or to amend a granted patent.
The changes are expected to improve legal certainty for patent applicants and for third parties. In addition, the changes should reduce costs by reducing administrative overhead for both the UKIPO and patent applicants/owners.
The changes will apply both to GB applications which are filed directly with the UKIPO, and applications which enter the GB national phase via the PCT, ie international, route.
The main changes are outlined below. The full list of changes can be found on the UKIPO website at www.gov.uk/government/publications/changes-to-patents-rules-on-1-october-2016-and-6-april-2017/changes-to-patents-rules-on-1-october-2016-and-6-april-2017.
New ‘Notification of Intention to Grant’
Previously, the UKIPO could effectively stamp ‘GRANTED’ on the file of an application, without any clear advance warning to the applicant. It would then be too late to file a divisional application to cover a different scope of protection, in particular a different invention, relative to that claimed in the now granted application. Applicants have therefore often been at risk of missing out on the full potential scope of protection for their inventions. Non-UK applicants were at particular risk, if they had assumed that the UK grant procedure would mirror that of the USPTO or EPO.
From 1 October 2016, an allowance notification will be issued by the UKIPO, indicating the start of a minimum period of one month to grant. Given that a divisional application can only be filed at the UKIPO while a ‘parent’ application containing the relevant subject-matter is pending (and before the final three months of the parent’s compliance period), the notification will allow an important, if brief, time window for filing last-minute divisionals.
Furthermore, for applications found allowable at the first examination report, the minimum period will be two months. This allows time for voluntary amendments and/or filing divisionals, and is generally consistent with current practice.
The Notification will form an official report under S. 18(4) of the Patents Act, and will be publicly available. Where no divisional application is desired, no action will be required in response to the Notification.
The new communication means that UK Patent Attorneys will no longer need to “foreshadow” divisional applications. This has previously involved indicating during examination – typically at the same time as sending an examination report response on an existing application which appears close to allowance – that the applicant may wish to file a divisional application. If the existing application was subsequently found to be in order for grant, the Examiner would then notify a delay of just two weeks before grant. Otherwise, the next examination report would inform that no further reminders would be issued regarding the filing of divisionals.
Given the time often required for a decision on whether to file a divisional application – balancing the drafting and filing costs against the potential value and likelihood of grant of the proposed divisional – the applicant could therefore lose the opportunity to fully protect their IP, or feel pressured into incurring significant costs without proper consideration. Thus, the introduction of a ‘Notification of Intention to Grant’ communication is a particularly welcome change for patent applicants.
Simplified time period for requesting reinstatement of a terminated application
An application, which has been terminated due to an unintentionally missed deadline, can sometimes be revived by filing a request for ‘reinstatement’ at the UKIPO.
Previously, the time period for filing the request was difficult to determine, as this depended on the exact date of the ‘removal of the cause of non-compliance’. The removal of the cause would generally be when the applicant became aware of the missed deadline, for example by receipt of a UKIPO communication to this effect. However, the exact date could be difficult to determine depending on the cause of the non-compliance, eg illness, unusual postal delay, lack of funds due to circumstances beyond the applicant’s control, or simply a one-off administrative mistake.
From 1 October 2016 the deadline for submitting the request will simply be 12 months from the date of termination. This will apply to all new and pending applications, as well as any that have been terminated within the 12 months preceding a request received at the UKIPO after 1 October 2016.
It will remain necessary to file evidence that the deadline was missed unintentionally.
Furthermore, third parties will generally retain the right to continue any act that infringes the ultimately granted patent, if that act begins between the publications of the termination and the request for reinstatement. Therefore, we strongly advise that any request for reinstatement should always be submitted as soon as possible, even under the new rules.
We note that this change does not affect the deadline for requesting ‘restoration’ of a granted patent after a renewal fee deadline has been missed.
Clarification of time period for amending international patent applications upon UK national phase entry
Before expiry of the ‘international phase’ of an international, ie PCT, application, an applicant can choose to enter the ‘national phase’ in one or more jurisdictions including the UK. From 1 October 2016, the Rules are clarified regarding when an applicant can file voluntary amendments after entry to the UK national phase.
Such voluntary amendment may allow the examination to focus on claims that the applicant believes are of greater potential value and/or more likely to be granted (for example on the basis of the International Search Report). Voluntary amendments may therefore allow examination to proceed more efficiently at the UKIPO.
The clarification of the Rules in this regard is generally in line with current practice at the UKIPO, and thus merely provides greater certainty for the applicant. Specifically, the changes clarify that if the ISR (International Search Report) has issued before UK national phase entry, an applicant can voluntarily amend their application at any time after entry and until the first UK examination report is issued. If however the ISR has not been issued before the UK national phase entry (eg if the application entered the national phase early), the applicant can amend voluntarily only from the earliest of the dates of issue of the UK search report and ISR. Again, the cut-off date is issuance of the first examination report.
Applicant generally retain the right to voluntarily amend a patent application in response to the first examination report, and at other times at the Examiner’s discretion.
Simplified drawings requirements
From 1 October 2016, the strict formal requirements for drawings in applications will be slightly relaxed to permit shading, if this helps to represent a shape and does not obscure other parts of the drawing. In addition, black and white photographs will be allowed, provided that they are clear and capable of direct reproduction. While colour figures will unfortunately continue to be rejected by the UKIPO, the changes will nevertheless reduce the costs incurred by the applicant for formalising drawings/photographs.
Non-allowability of omnibus claims
Omnibus claims refer generally to the specification, eg “A <widget/process> substantially as described and/or illustrated herein”. Such claims have sometimes been useful for achieving a quick grant and/or where the applicant has been content to obtain only a relatively narrow scope of protection, eg for the purposes of obtaining ‘Patent Box’ tax benefits. Moreover, omnibus claims have also been used as a deterrent to potential infringers, since their scope of protection is often unclear. In this regard, it is expected that the limited allowability of omnibus claims will provide greater legal certainty to third parties regarding freedom to operate.
In line with USPTO and EPO practice, from 6 April 2017, UK Examiners will generally object to the presence of any omnibus claim in a GB patent application. Any request to add an omnibus claim to a granted GB patent will similarly be rejected. Exceptions will be made only where the technical features of the invention cannot be clearly and concisely defined using words, a mathematical or chemical formula or any other written means.
This will apply to all applications, except where the ‘compliance period’ for bringing the application into order for grant expires before 6 April 2017. Importantly, omnibus claims in already granted patents will remain enforceable.
Other changes from 1 October 2016, which will reduce administrative burdens for patent applicants/owners, will include:
- Extensions to the period for providing an address for service;
- Clarification of requirements concerning changes of names and addresses;
- Clarification of when amendments made during proceedings will be advertised; and
- Removing certain requirements for multiple copies of documents.
A further change from 6 April 2017 concerns the address used to receive renewal reminders.