Changes to UK Patents Rules

The UK Intellectual Property Office (IPO) has announced a suite of changes to the UK Patents Rules which determine much of the patent procedure before the IPO. The changes are to be implemented in two stages. The first set of rule changes, as set out below, is due to come into force from the beginning of October this year.

Intention to grant

One key change will be the introduction of a “notification of intention to grant” letter. The IPO will issue such a letter when an examiner has determined that a patent application is in order for grant. The letter will generally give one month’s advance notice of the grant of the patent (or two months if the application proceeds straight to grant without any objections). The advance warning provided by the notification will give applicants time to decide whether they wish to file any divisional applications, which must be filed before the parent application is granted, terminated or withdrawn. Under the IPO’s existing practice, where no advance notification of grant is given, sudden grant of a patent can leave applicants with no opportunity to file divisional applications. This change to the rules will therefore be welcomed by applicants and attorneys alike, and brings the IPO’s practice into line with other jurisdictions such as the United States or Europe, where letters notifying the applicant of the respective office’s intention to grant a patent are standard.

Reinstatement

Another key change will be a simplification of the procedure for requesting reinstatement of a patent application which has been terminated due to failure to meet an official deadline. Currently, if an applicant’s failure to meet the deadline was unintentional, reinstatement of the application may be requested within a period of two months following the “removal of the cause of non-compliance” with the deadline, and at the latest within 12 months of the missed deadline. From October, however, applicants will simply have to request reinstatement within the 12-month period following the unintentionally missed deadline. This removes any confusion over determining what exactly the “cause for non-compliance” was or precisely when it was removed.

Other changes

Other changes coming into force in October include minor changes to the Rules relating to formal drawings, deadlines for filing voluntary amendments for international patent applications entering the UK national phase, the official form for notifying the IPO of changes to the applicant’s name or address, and the deadline for providing an address for service.

The second set of changes to the Rules, which will come into force in April next year, concerns the allowability of a particular claim format (so-called ‘omnibus claims’) and the address used to receive renewal reminders. More information will be provided closer to the date of these changes coming into force.