18 November 2016

Changes to the UK Patent Rules and What They Mean

From the 1st October 2016 several changes have been made to the Patents Rules in the UK, which set out the UK patent application procedure. The more significant of these will directly benefit applicants, as explained below.

Intention to Grant Notification

The most significant and welcome change is the introduction of an ‘Intention to Grant’ notification that will be sent to the applicant once the examiner is ready to grant the application. Previously, no such notification existed and applications could grant without warning, denying applicants the opportunity to file a divisional application or make any final voluntary amendments. The ‘Intention to Grant’ notification will typically give the applicant a 1 month warning before grant, extending to 2 months if the application proceeds directly to grant without an examination report being issued. This change brings UK practice into line with that of the European and US patent offices.

Reinstatement Deadline 

‘Reinstatement’ can be used to revive an application that has lapsed due to an unintentionally missed deadline, for example a missed response to an examination report.   

The deadline for requesting reinstatement of an application will now simply be 12 months from the missed deadline. The previous additional requirement for the request to be filed “within 2 months of removal of the cause of non-compliance” has been removed, greatly simplifying the process. In the past the definition of the date of the removal of the cause of non-compliance caused confusion, and so the new system should be much simpler. 

However, it should be noted that only the deadline has changed – the applicant still has to show that the deadline was missed unintentionally in order to successfully reinstate an application. 

We also recommend that any request for reinstatement is filed as soon as possible after the missed deadline to minimise any third party rights that might accrue in the meantime. 

Other Changes

The deadline for filing voluntary amendments after entering the UK national phase from a PCT application is now any time until the first UK examination report is issued. 

Formal drawings can now include shading and black and white photographs, provided that they are clear and capable of reproduction. 

A second set of changes are planned from 6th April 2017. From this date, omnibus claims (claims that refer only to the description and drawings) will no longer be permitted. Granted UK patents are unaffected, and such claims will be considered valid.