T 1024/18 – Another Turn of Events for Description Amendments
This decision appears to bring description amendments back to requiring amendments to the description to conform with any amended…
The UK government published a consultation on 29 February 2016, seeking views on a package of proposed amendments to the current Patents Rules.
The proposals, eleven in total, aim to simplify detailed aspects of UK patents legislation, to provide greater clarity and to reduce the burden on businesses by taking account of modern working practices.
Following the consultation, in which respondents overwhelmingly favoured the amendments, the proposals have now been accepted.
Key changes are as follows:
Black and white photographs and shaded drawings will be allowed, provided they are clear and reproducible.
Benefit to applicants – The preparation of compliant formal drawings will be simplified. This should reduce costs for applicants. Note, however, that drawings meeting stricter requirements will still be required where protection is sought outside the UK.
At present, a UKIPO Examiner usually grants a UK patent application as soon as it is in order for grant. However, this leads to uncertainty for the applicant as no specific date of grant is given, which is a problem as the applicant can only perform certain acts before the date of grant of the application, for example filing a divisional patent application.
The UKIPO will now provide more information to applicants by issuing an advanced notification of the date on which a patent will be granted. This practice is similar to that of the European Patent Office (EPO).
Benefit to applicants – 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 would be beneficial in the given circumstances. The period of advance notice of the intention to grant a patent is still to be confirmed, but is predicted to be 4 weeks after the date of notification of intention to grant a patent.
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.
In the consultation, this proposal was the most debated with some respondents commenting that not allowing omnibus claims unless ‘absolutely essential’ would lead to disagreement amongst Examiners. Nevertheless, the government asserted that as approximately only 0.01% of European Patents (UK) granted each year were subject to the addition of an omnibus claim after grant it would seem unlikely that there will be a large number of disagreements over whether an omnibus claim can be included. Further, as so few European Patents (UK) take up the option of adding an omnibus claim after grant, it can be deduced that omnibus claims do not add significant useful protection to most patents.
Benefit to applicants – 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.
The UKIPO has indicated the changes will be implemented ‘at the next suitable opportunity’. We will keep you informed about exact timings as this information is released.
If you need advice on how these changes will affect you, your patents or any other aspects of your intellectual property, please get in touch with one of our attorneys who will be able to assist you.