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A clean sweep for Autumn?

12.10.2016

The UK Intellectual Property Office (UK IPO) has announced a raft of rule changes that take effect from 1 October 2016. We provide a summary of the most relevant changes and the UK IPO notice concerning all of the rule changes is HERE www.gov.uk/government/publications/changes-to-patents-rules-on-1-october-2016-and-6-april-2017/changes-to-patents-rules-on-1-october-2016-and-6-april-2017.

1) Advance notice of grant

In line with the grant procedure at the European Patent Office (EPO) the UK IPO will now be providing advance notice of grant to applicants. This will be issued in a communication outlining that the application meets all requirements and giving 1 or 2 months' notice ahead of grant.

This change will give applicants a clear, guaranteed period to decide whether or not to file a divisional application from the allowed application. A divisional application must be filed before the parent application proceeds to grant.

Under the previous rules the UK IPO gave no warning of the imminent grant of an application so applicants and their representatives had to 'foreshadow' the possible filing of a divisional. This procedure was informal and relied on highlighting to the examiner in a response to an examination report that a divisional application might be of interest, by requesting time for the applicants to decide on a divisional before the case was granted. We welcome this additional step in the grant process for procedural clarity which should assist our clients plan their filing strategy.

2) Formal Drawings

The strict requirements for formal drawings to be black and white solid line drawings are relaxed in the new rules. Shading will be acceptable providing the shading does not obscure other parts of the drawing. Black and white photographs will be allowed providing they are clear and reproducible. Drawings must be suitable for publication otherwise they will be rejected. This change will allow us to use a broader range of representations to illustrate the invention in the patent application.

3) Name and address changes

The forms and requirements for updating the office with new name and/or address details have been tweaked. This is in order to make it clear to the UK IPO if the details being updated (on the required form 20) are required due to an error or are being requested as a result of a company update and name and/or address change.

These changes streamline some of the processes we use at the UK IPO while prosecuting patent applications, and in turn should make life simpler for clients and attorneys alike.

Contact Catherine at catherine.bonner@chapmanip.com and Helga at helga.chapman@chapmanip.com

  Catherine has been really great to work with. Catherine invested the time to visit and understand our project, she made the application process surprisingly simple. I'd definitely recommend chapman+co.

Scott Phillips
Director, JW European Ltd

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