New UK Patents Rules 2007

The IPKat was musing only last week on where the proposed new UK patents rules had got to, after they were announced by the UK-IPO earlier this year. As the old saying goes, be careful what you wish for, as you might just get it.

(Right: some rules the IPKat would prefer to see implemented; get the t-shirt here)

Considerably later than the promised date of 1 October, the new rules are, according to the UK-IPO, due to come in on 17 December 2007. As if EPC2000 (coming into force a mere 4 days earlier: see IPKat posts here, here, here and here) was not enough for patent practitioners to be dealing with in the run-up to Christmas, we will also have to deal with an entirely new and renumbered set of UK rules too. The Patents Rules 2007 (SI 2007/3291), the Patents (Fees) Rules 2007 (SI 2007/3292) and the Patents (Compulsory Licensing and Supplementary Protection Certificates) Regulations 2007 (SI 2007/3293) will all come into force on the same day. At the time of writing, the SIs have not yet been published, but the above links should work when they are.

The UK Office says,

"The new Patents Rules are a completely modernised set of rules which govern procedures concerning patents and SPCs. In particular, they:

* reform provisions on patent litigation at the Office - introducing flexible and user-friendly procedures, and clearer case-management powers
* better reflect current working practices such as electronic filing of patent applications
* include simplified and updated administrative requirements
* abolish Forms 11, 53 and 58 (with associated fees)
* introduce newly-clarified provisions on SPCs, bringing consistent provisions on patents and SPCs together for the first time
* implement detailed provisions concerning recent EC Regulations on the extension of SPCs for paediatric medicines and on patent compulsory licences for certain pharmaceutical products.

User should also note that, under the new Rules, the Office will no longer be able to treat post as having been received earlier than it actually was. The current "postal deeming" arrangement [under Rule 97] will cease to apply to any document posted to the Office in connection with a patent or patent application, where that document was posted on or after 17 December.

The new Patents (Fees) Rules reflect the restructured Patents Rules, including the abolition of certain Patents Forms and the inclusion in the Patents Rules of SPC matters.

The Patents Regulations make related changes to the Patents Act 1977 in respect of SPCs and patent compulsory licences. In particular, the Regulations amend the Act so that it is clear which provisions of the Act apply to SPCs, and what modifications, if any, are necessary.

The Regulations also provide a basis in the Act for the new rules which implement the recent EC Regulations on the extension of SPCs for paediatric medicines and on patent compulsory licences."

The IPKat knows that many people will be quite furious with the new rules, and in particular the way in which they are arriving: late, with very little warning, and heavily modified for no good reason. The rules do not seem to achieve anything of significance, while causing a great deal of pain and sheer annoyance to many people. The IPKat would like to point out just a few reasons why (in no particular order of importance):

1. Welsh. As regular readers will know (see previous posts here and here), the IPKat is quite sceptical about the utterly stupid, pointless and wasteful new provision to allow applications to be prosecuted (if not granted) in Welsh. How about also allowing applications to be prosecuted in Gaelic, Urdu or Polish, which are also widely spoken in the UK?

2. Abolishing Rule 97. This can only increase costs for applicants, as attorneys will need to check, check and check again that their documents arrived in good time at the Patent Office. The Royal Mail will inevitably lose practically all business from patent attorneys, while courier companies will continue to rake it in from those who need to know that their documents arrived on time. Even then, we know that things can go missing (anyone seen a couple of computer discs?). The real point of the old rule was, although it hardly ever needed to be used, that it provided a very useful reassurance that a date would not be lost as long as a document was posted on time.

3. The Patent Office. The new rules, along with all other relevant legislation, use the 'old' name, which is still the legally correct one. The name UK-IPO currently has no legal standing at all, as far as the IPKat can work out. Can anyone point out how the new name has changed things for the better? Even slightly? Why should we not carry on using the proper name until they change it properly?

4. Even the UK government can't keep up with their own legislation, as shown on the UK Statute Law Database (does anyone actually use this?), which now has a version of the Patents Act 1977 that is several years out of date. How do they expect (not to say demand) everyone else to keep up?

5. Renumbering. (The IPKat is carefully avoiding the use of expletives, as some people may be easily offended.) How on earth does changing the number of every single provision in the rules actually help anyone, other than those who, for whatever OCD or autistic spectrum-related reasons, find pleasure in keeping things in proper integer order? Was anyone in practice actually unable to understand where or what rules 6A to 6C were? In any case, how long will it be before we see new rules creeping inbetween the numbers?

6. Time. This is probably the biggest annoyance, at least for patent attorneys. Until the SIs are actually published (see above), we have no idea what form the rules will take. This list or rants is therefore only based on the draft rules (which, in line with previous 'consultations', the IPKat suspects will be the exact form of the final version). Will the final rules actually be the same as the draft rules, or will there be some changes? Will the numbering be the same? Will responses to the consultation (also not yet published) have had any effect at all? We simply do not know. Until the real rules are published, there is no point putting into action the many new procedures that patent firms have to do to take them into account, since they could have to be done all over again. Even assuming the new rules are published today (28 November), this gives everybody less than 3 weeks to prepare. Is this fair? At least the EPO gave the profession a whole year to prepare for EPC2000 after the new rules were finalised.

The IPKat will stop ranting for now, and leave it to others to comment if they wish.