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