Tuesday, 29 March 2016

Updating UK Patent Rules

With so much emphasis on the Unified Patent Court and European patent with unitary effect or unitary patent if you prefer, administered by the mighty EPO, the humble UK national patent can
Baroness Neville-Rolfe champion of UK IPO
easily be forgotten. However, its importance, particularly to entrepreneurs looking for early grants and the inventors of those technologies shunned by the EPO is not to be underestimated. Any innovator who finds the prospect of €10,000 as the starting price for litigation and has been taken with the access ability of the Intellectual Property Enterprise Court should still be very very interested in the UK national patent.

The UK IPO has been doing a little tidying up and recently produced a consultation on proposed changes to the Patents Rules. Responses are sought by 22 April 2016.

There are a number of specific rule proposals but there is an open question (17)which invites any other proposals for rule changes or clarifications. There is a hint that you might want to consider the extensions of time rule but the question is not limited to that and if there are any other rules of bug you now is the time to say so that they can be included in the amending statutory instrument under construction.

The Patents Rules live here  But only in PDF downloadable format. Isn't it time they came in a nice HTML version for easier referencing.

Some of the proposals are very straightforward and it will be difficult for anybody to dissent from the idea that we should no longer have to file multiple copies of form 51 when appointing an agent or triplicate copies of international applications (does anybody really file international applications with the UK IPO in paper. It might even be time to make electronic filing compulsory what do you think, or are you still reliant on the fax machine. In cases of Internet meltdown and bearing in mind that large parts of the country have dire Internet connections, it may be a little too soon for that step to be compulsory but we should certainly be encouraging paper elimination.

The object of the rule changes is to benefit did businesses and individuals making use of the patent system (which naturally includes those at risk of being patent infringers)

Omnibus claims
The proposal is to discourage them- not by relying on clarity objections but by introducing a new rule prohibiting references to the description or drawings. I entirely agree with the ambition but I'm less certain that this is the way to do it. The scope of these claims is unclear. The reason that they refer to the description and drawings is to limit them to the embodiments and it may well be that for some inventors limiting their claim to the embodiment described is all they can afford. If the embodiment is described clearly and often it isn't, this might be an acceptable claim but a very narrow one. The really offensive part of an omnibus claim is the "substantially as herein described" phraseology not the reference to the drawings.  After all Article 69 says that every claim has to be interpreted by reference to the description and drawings.

Rewriting paragraph 14 .124 and .125 of the Manual of Patent Practice to reflect current case law might be the answer.

As to the transition I would be happy if no omnibus claim were allowed from now on but  the idea that it should apply to granted patents when the rule comes into force could be a very Draconian hit on some self filers who may find their patents no longer exist in any valid form despite payment of renewal fees. IPEC may well have to continue to construe those claims narrowly as they have done before.

Most applicants will also have a main claim so we could achieve the same effect by limiting the number of independent claims.The requirement for a statement of invention harks back to the need for the omnibus claim to be no broader than claim 1. I have always thought statements of invention were bad drafting practice and made patents more difficult for the lay reader to understand. The solution of the invention is defined by the appended claims does the job.

Photographs Q10 

The proposals include the possibility of photographs, but not CAD Drawings which might be shaded. Reproducibility is what it's about and it drawings can be reproduced it shouldn't matter whether they are in black-and-white colour or gray scale. However, line drawings are often likely to be the best choice.

I wonder what our illustrious professional body is going to say about these proposals

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