It should go without saying but….
EPO Enlarged Board of Appeal significantly changes formal requirements for making a valid priority claim.
Last month we reported on some of the proposed changes to the current Patent Rules, which are designed to provide greater clarity and to reduce the burden on businesses by taking account of modern working practices. The UKIPO has now confirmed a number of changes will be implemented on the 1 October 2016 and this will be followed by a second wave of changes on 6 April 2017.
Currently, the UKIPO grants patent applications without giving any warning. This leads to uncertainty for the applicant and can cause problems as the applicant can only perform certain acts, such as filing a divisional patent application, before the application is granted.
From 1 October 2016, the UKIPO will start to issue a new notification of intention to grant, confirming that the main application has met all the requirements for grant but giving at least one month’s notice before it is actually granted.
This amendment will provide applicants with a clearer time frame in which to complete certain actions. In particular, applicants will now have a hard deadline for filing divisional applications. This will allow applicants and attorneys to put more thought into whether filing a divisional application to cover a different scope of protection would be beneficial in the given circumstances.
On 1 October 2016, the legislative requirements related to technical drawings included in patent applications will be relaxed. Shading in drawings and black and white photographs will both be allowed, provided they are clear and reproducible.
Where an application has been terminated due to an unintentionally missed deadline, it is possible to request reinstatement of the application at the UKIPO. The time period for requesting reinstatement has previously been difficult to calculate and led to confusion for applicants.
From 1 October 2016, the deadline will be 12 months from the date of termination. This will apply to all terminated patent applications from 1 October 2016 onwards as well as any applications that have been terminated prior to 1 October 2016, provided no more than 12 months has passed since the date of termination.
It is important to be aware that third parties can gain rights to your invention during the time an application is terminated, so we would advise that any request for reinstatement is always submitted as soon as possible.
From 6 April 2017 it will generally no longer be allowable to include omnibus claims in UK patent applications. They 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.
Omnibus (or “picture”) claims refer generally to the description and/or drawings of an application. The current UK patent law practice of allowing omnibus claims is inconsistent with (though not in breach of) the requirements of the European Patent Convention (EPC) and the international Patent Cooperation Treaty (PCT). Arguably, omnibus claims leave third parties unclear as to the scope of a claim.
It’s hard to see this change as a benefit for patent applicants, because it removes a way in which protection can be claimed for an invention. However, from a freedom to operate perspective all businesses will benefit in not having to assess the (generally unclear) scope of protection afforded by omnibus claims of third party patents.
If you have any questions about how these changes might affect you, please don’t hesistate to get in touch.