Following a public consultation, two sets of changes are being implemented to the Patent Rules 2007, effective 1st October 2016 and 6th April 2017. These will increase legal certainty, make procedures more flexible, and reduce administrative burdens for patent applicants and owners. The changes effective 6th April 2017 are discussed below.
Allowability of omnibus claims
Omnibus claims in the form
"X substantially as described herein with reference to the accompanying drawings"
have traditionally been allowable in the UK. However, due to concerns as to the understanding and scope of such claims, they will generally no longer be allowable from 6th April. It will also no longer be possible to amend a granted patent to insert an omnibus claim. This change will increase legal certainty for businesses.
The new guidance states that omnibus claims "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 have no effect on granted patents which already include omnibus claims. These will remain valid and the presence of an omnibus claim will not be a ground for revocation.
Address used to receive renewal reminders
The requirement to annually notify the IPO of the address to which renewal payment reminders are sent (where different from the registered address for service) will be abolished. Instead a previously provided address will remain valid until it is cancelled or updated by the patent proprietor. This change reduces the burden on patentees and will allow them to use the online renewal services (not previously available to those also notifying an address at the time of renewal fee payment).
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
