Update to Patent Rules from 1 October 2016, impact on PEB exams

As some of you may be aware, there will be upcoming changes to the Patent Rules, some of which will take effect from 1 October 2016.  These have been covered on the IPKat Blog (http://ipkitten.blogspot.co.uk/2016/09/changes-to-cider-house-fight-club.html) as well as on the UKIPO website (https://www.gov.uk/government/publications/changes-to-patents-rules-on-1-october-2016-and-6-april-2017).

 

As your education coordinators, we have sought for clarification from the PEB for the impact that this will have on this year’s Exams, due to take place in October.

 

For the avoidance of doubt, two changes taking effect from 1 October 2016 which are often issues which need to be addressed in PEB Examinations (especially in FD1) are:

 

Introduction of a new report under S18(4) giving advance notice of an intention to grant – this is effectively equivalent to a communication under R71(3) EPC, and will give applicants a chance to further amend/correct prior to grant, as well as being able to file divisional applications (though previous R19(3) will still apply, meaning that it still must be filed no later than 3 months before the end of the compliance period).

 

Removal of R32(2)(a) – the possible time period of 2 months from removal of non-compliance will no longer apply for applications to reinstate a terminated application.  Thus the relevant period will be a straight forward 12 months from termination.  This rule will also be retroactive, and thus some applications which could not have been reinstated may once again apply – provided all the other requirements are met.

 

One potential concern is that marks are often given for calculation of the requirements and relevant dates for the situation presented in FD1, and removal of a rule will have implications in that such calculations would obviously no longer be needed.

 

In response to our request, the Chief Examiner has simply restated:

 

Candidates are reminded that they will not be penalised for basing their answers on law that was enacted after 1st April 2016. Similarly, candidates will not be penalised for basing their answers on law that was in effect before 1st April 2016 and that has subsequently been amended

 

We understand that many of you are now deep into your revision timetables.  Thus, we would simply advise:

 

  • Be aware that the above laws (and others relating to minor formalities requirements) will change on 1 October 2016
  • If you are going to stick with the old law – be aware of changes to online texts (such as statute) which may occur in the weeks leading up to the Exam
  • Whichever set of laws you use, make sure you apply the law consistently through the whole of your Exam

 

On behalf of the CIPA Informals committee, we wish you the best of luck in the weeks ahead.

 

Feng Rao, Laura Jennings

CIPA Informals Education Coordinators 2016-17

 

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2 thoughts on “Update to Patent Rules from 1 October 2016, impact on PEB exams

  1. I contacted PEB with regard to the Rule changes, the removal of Omnibus claims, and the impact on P3(FD2). I gave the following three scenarios, an Examiner’s response is given below each:

    a. If I include an omnibus claim in my P3 answer, this is incorrect practice and would be objected to by the UKIPO. I should, in principle, not include an omnibus claim in my answer.
    -The application may be granted before the law comes into force on 6th April 2017 and so the inclusion of omnibus claims is only incorrect practice _after_ this date.

    b. If I do not include an omnibus claim in my answer, I will not be penalised. However, it is unclear whether I would still be awarded a mark (if available) for an omnibus claim (how can an absent claim be marked?).
    -Candidates not including omnibus claims will not be penalised. If marks are available for omnibus claims and suitable such claims are presented by a candidate, marks will be awarded.

    c. If I include a statement in my answer saying no omnibus claim is included as these are no longer allowable, I have shown that I am aware of the law change, but Examiner’s typically do not like statements in scripts directed to them. Furthermore, the inclusion of such a statement is bad in real practice and has no place in a patent specification.
    -Agreed

    Given the Examiner’s response to scenario b, while you will not be penalised for using new law, it does not appear that you will be awarded a mark for it, at least for an omnibus claim in FD2.

  2. Hi, thanks for your response.

    I was under the impression the law change to omnibus claims was less controversial because it will only come into effect from 6 April 2017. It is also specifically pointed out that it does not apply retroactively (for example, to patents already granted and in force).

    The response to b – it sounds somewhat confusing – so you will *not* be awarded a mark if you prepare claims which did not include an omnibus claim if there is a mark for one? (As far as I’m aware, there always has been one).

    However, as mentioned before – I think this is different because the law change to omnibus claims will not have taken effect by the date of the exam…

    As regards reinstatement, as FD1 is a practice paper, in some ways it would be incorrect to 1. apply the new law and 2. still state the old law in order to get the marks – as the old law is irrelevant (if you answer the question in that way) and would only seek to confuse your client.

    But I must admit, I was disappointed that the Chief Examiner did not present a more coherent response.

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