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Changes to the UK Patent Rules

Print publication

10/11/2016

The UK Intellectual Property Office (UKIPO) has published details of amendments to the Patent Rules 2007.  The majority of the amendments came into force on 1 October 2016, with the remainder scheduled to come into force on 6 April 2016.

The principal changes from 1 October 2016 are as follows:

  • The UKIPO will issue a new “notification of intention to grant” letter. This will provide applicants with clarity as to the time left to take any action before grant of the patent, in particular the time scales for the filing of any divisional patent applications (which cannot be filed after the grant of the patent).
  • There is a relaxation of the requirements for formal drawings. From 1 October 2016, shadings in drawings may be included, provided they are clear.  The previous requirement was that drawings must comprise black lines and must not be shaded.
  • The filing of voluntary amendments to international patent applications are explicitly allowed up until the date of issue of the first UK examination report. The applicant must, however, wait until the first search report is issued on the application.  As this will usually be before national entry phase, voluntary amendments can be filed on entry into the UK national phase.

The principal change from 6 April 2017 is the allowability of omnibus claims.  These are claims that appear at the end of claim set and generally claim the invention by reference to the description or drawings.  Under the new rules omnibus claims 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 brings the UK into line with the European Patent Office, which only allows omnibus claims where they are absolutely necessary.

Please contact us for further details on these and the other changes to the Patent Rules 2007.

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