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
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
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
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.
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