UK Patent Rules and Design Fees - some changes from 1 October 2016

September 2016

Changes proposed to rules and procedures at the UKIPO will come into effect on 1 October 2016.  The changes are being made to increase legal certainty, make procedures more flexible, and overall aim to reduce burdens for applicants and owners of patent and design rights.

Changes taking place on 1 October 2016 - Patents

Notification of intention to grant

From 1 October 2016, the UKIPO will start to issue a new “notification of intention to grant” letter. No action will be required from the applicant in relation to the letter, but it will provide applicants with a clear picture of the time left to take any action they wish before grant.  In particular, the time scales for filing any divisional patent application(s).  This means that from 1 October, applicants will be guaranteed a period to file such applications beacuse they will be notified that the main application has met all the requirements for grant, but will have time (usually one month) before its actual grant date.

Relaxing the requirements for formal drawings

Legislative requirements relating to technical drawings included in UK patent applications are to be relaxed.  Shading in drawings as well as black and white photographs may both be included, provided they are clear.  However, the UKIPO can still continue to reject drawings and photographs if they are not suitable for reproduction and publication.

Amending international patent applications upon entry to the UK national phase

This change clarifies when an applicant can amend their international patent application which enters the UK national phase.   An applicant can (i) amend voluntarily from the time of UK national phase entry up until the first UK examination report is issued.; or (ii) where no ISR (International Search Report) has been issued by the time the application enters the UK national phase, the applicant can amend voluntarily from the date of issue of the UK search report or the ISR (whichever is first).

Other procedural changes from 1 October which will reduce administrative burdens for patent applicants and owners will include:

Changes taking place on 1 October 2016 – Design Fees

On 1 October the cost to register designs in the UK will come down considerably.  New fees for multiple online applications will provide designers with a cost-effective way of registering and protecting numerous designs in the UK.  For example, the cost of an application containing 25 designs (filed online) will be reduced from £1060 to £110.  The UKIPO has produced Business guidance on changes to registered design fees

Other changes from 6 April 2017

Allowability of omnibus claims

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.  This change will also apply to amending a granted patent to insert an omnibus claim. However the presence of an omnibus claim in a granted patent will not be a ground for revocation and will remain valid.

Address used to receive renewal reminders

After 6 April 2017, it will no longer ne necessary to annually notify the UKIPO of the address to which renewal payment reminders are sent (where it differs from the registered address for service).

If you would like further advice on this or any other matter please contact your usual HGF representative or visit our Contact page to get in touch with your nearest HGF office.