30/09/2016
If you file UK patent applications or have commercial operations based in the UK, then you should take note of Patent Rules changes to be implemented by the UK Intellectual Property Office (UKIPO), in most cases from 1 October 2016. These rules concern some of the detailed requirements which must be met for a patent to be granted, and also cover the procedures to be followed when applying for a patent or for requesting any changes to a granted patent. The full guidance to the patent rule changes published by the UKIPO can be found here. Changes to registered design fees are also coming into effect on 1 October 2016 and these changes are published here.
The rule changes seek to increase legal certainty while making the patent procedure more flexible, and reducing the administrative burden on applications and owners of patents. Patent proprietors and others need to be aware of the changes so that they can consider whether their UK patent handling procedures are still adequate for their needs in light of the changes. A selection of the changes is considered below.
Notification of intention to grant
From 1 October 2016, the UKIPO will issue a notification of intention to grant, similar to the procedure followed by the European Patent Office (EPO). This will give the applicant at least one month’s advance notice of the grant date and will therefore provide time to file any divisional patent applications if needed.
Period for requesting reinstatement
From 1 October 2016, when a patent application has terminated because the applicant has unintentionally failed to meet a deadline, the applicant will have a period of 12 months from termination to request reinstatement. This is in contrast to the corresponding procedure used by the EPO where the deadline for requesting re-establishment of rights is more complicated to calculate.
Relaxing the requirements for formal drawings
From 1 October 2016, the technical requirements for formal drawings will be relaxed to allow shading in drawings, provided the shading does not obscure other parts of the drawings. Black and white photographs will also now be allowed provided that they are clear and capable of reproduction.
Omnibus claims
From 6 April 2017, omnibus claims, which attempt to define the legal scope of protection of the invention simply with reference to the description and drawings, will generally no longer be allowed.
This change brings the UK in line with the European patent system, and will increase certainty for third parties because it will be easier to assess whether a granted UK patent is infringed or not. The removal of the omnibus claim may, however, lead to some loss of protection for patent proprietors. It will mean that applicants will need to consider very carefully prior to grant of a patent whether the current claim scope is suited to their requirements.
Omnibus claims may still 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. The impact of limiting the use of omnibus claims was considered in detail in our earlier blog.
Registered design fees
From 1 October 2016, for designs filed electronically, the official filing fee for filing a single application is reduced by £10 to £50. Further, the official filing fee for multiple applications including up to 10 designs in the same application will now be £70. Additional designs in the same multiple application may also be included for an additional fee of £20 for up to 10 additional designs. As a result of the new fee structure, the official filing fee for an electronic multiple design application with up to 50 designs included will be £150.
Renewal fees will also be reduced, meaning that a UK registered design is a very cost effective way of obtaining design protection in the UK.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
