Important changes to UK Patent Rules
Some changes to the UK Patents Rules 2007 are due to be introduced in the near future. These rules govern the requirements which a patent must meet in order to be granted, and the procedures which must be followed when applying for a patent.
The changes to the Rules will be introduced in two stages, the first set coming into force on 1 October 2016, and the second on 6 April 2017. The main changes which are likely to affect applicants are briefly outlined below.
1 October 2016
Notification of Intention to Grant
A notification of intention to grant will now be issued. This notification will inform an applicant that their patent application meets all the requirements for grant, and state the date on which the application will be sent for grant (normally providing a months’ notice). No response is required from the applicant.
The main benefit of this change is that it will provide a clear timeframe for the filing of any divisional application (which must be done before grant). This removes the need to pre-empt grant by requesting time for the filing of a divisional application, where such a move is being contemplated.
Timeframe for Reinstatement of an Application
Reinstatement of an application is possible where the application has lapsed due to the applicant unintentionally failing to meet a deadline. From 1 October 2016, the timeframe for requesting reinstatement will be 12 months from the termination of their patent application. This new deadline will be applicable to all new and pending applications, as well as to any applications terminated within the last 12 months.
Amending PCT Applications upon Entry to the UK National Phase
It will be possible to voluntarily amend International (PCT) patent applications following entry to the UK national phase at the following stages:
• upon entry to the UK national phase if an international search report (ISR) has already been issued; or
• from the date of issue of the first of the UK search report or ISR, where the ISR was not issued prior to entry into the UK national phase.
It remains possible to voluntarily amend all patent applications in response to the first examination report, and at other times with the permission of the UKIPO.
6 April 2017
Allowability of Omnibus Claims
Omnibus claims are those which refer generally to the description or drawings of the patent application, but which do not state any technical features (e.g. A widget as depicted in Figure 1). The scope of such claims has always been unclear, and from 6 April 2017 they will generally not be allowable in UK patent applications. The only exception to this will be if the technical features of the invention cannot be clearly defined using words, a mathematical or chemical formula, or other means.
It is worth noting that this change will not affect the validity of any patents which have already been granted, and which contain one or more omnibus claims.
There are also a few other changes, including to the requirements for formal drawings, and other formal requirements, which will be of less direct concern to applicants. The full list of changes can be found on the UKIPO website here.