Changes to the Manual of Patent Practice
This section details the recent main changes to the manual.
| Paragraph | Update |
| 130.05.2 | Update to Authority to Act Order |
| Paragraph | Update |
|
7.11.1 13.09 13.10.1 |
Updated to in light of Thaler v Comptroller-General of Patents, Designs and Trade Marks [2023] UKSC 49 |
| SPM3.03.1 | Updated in light of Newron Pharmaceuticals SpA v The Comptroller General of Patents, Trademarks and Designs [2024] EWCA Civ 128 |
| SPM3.05.1 | Updated in light of Merck Serono S.A. v The Comptroller-General of Patents, Trade Marks and Designs [2023] EWHC 3240 (Ch) |
| Paragraph | Update |
| 1.39.4 | Added in light of Emotional Perception AI Ltd v Comptroller-General of Patents, Designs and Trade Marks [2023] EWHC 2948 (Ch) |
| 3.87.3 | Updated in light of Teva Pharmaceutical Industries Ltd v Astellas Pharma Inc. [2022] EWHC 1316(Pat) and Teva Pharmaceutical Industries Ltd & Anor v Astellas Pharma Inc [2023] EWCA Civ 880 |
| 3.95 | Updated in light of Vernacare Limited v Moulded Fibre Products Limited [2023] EWCA Civ 831 |
| 76.15.5 | Updated in light of Philip Morris Products SA & Anor v Nicoventures Trading Ltd & Anor [2023] EWHC 2616 (Pat) |
| 76.20.1 | Added in light of Ensygnia v Shell [2023] EWHC 1495 (pat) |
| SPC - Several paragraphs | Updated to reflect changes in terminology arising from the Retained EU Law (Revocation and Reform) Act 2023 |
| Paragraph | Update |
| 20.02 | Updated in light of Walmart Apollo’s application BL O/0704/23 |
| Paragraph | Update |
| 36.07 | Updated in light of Taylor v Lanarkshire Health Board (BL O/864/21) and (BL O/157/22) |
| 20.02 | Updated in light of Metabiotech’s application BL O/359/23 |
| Paragraph | Update |
| 1.20.2 | Updated in light of Nokia v Oppo [2023] EHWC 23 (Pat) |
| 3.26.1 | Updated in light of Vernacare Ltd v Moulded Fibre Products (MFP) [2022] EWHC 2197 (IPEC) |
| 5.30 | Updated in light of Adamson Jones IP Limited v American Isostatic Presses Inc (BLO/00992/23) |
|
15.20.1 20.02 |
Updated in light of forthcoming practice change on accordance of compliance dates for divisional applications. |
| Paragraph | Update |
| 20.02 | Updated in light of Xu’s Application (BL O/610/22) |
| 125.17.8 and 125.18.8 | Updated in light of Vernacare Ltd v Moulded Fibre Products (MFP) [2022] EWHC 2197 (IPEC) |
| Paragraph | Update |
| 2.08.1 | Updated in light of Zebra Technologies Corporation (BL O/653/22(PDF,402 KB)) |
| Various paragraphs in S.13 and S.89B | Updated in Light of Thaler’s Application (BL O/447/22(PDF, 226 KB)) |
| SPM3.03.1 | Updated in light of Roche Glycart AG (BL O/711/22) |
| Paragraph | Update |
| 4A.29.4.1 | Updated in light of Sandoz Ltd v Teva Pharmaceutical Industries Ltd [2022] EWHC 822 (Pat) |
| 67.04 | Updated in light of Neurim Pharmaceuticals (1991) Ltd v Generics (UK) Ltd [2022] EWCA Civ 359 |
| SPM 1.04.2 | Updated in light of Ethicon, Inc., and Omrix Biopharmaceuticals, Inc. (BL O/136/22) |
| Paragraph | Update |
| 3.87.2 | Updated in light of Teva Pharmaceutical Industries Ltd & Ors v Bayer Healthcare LLC [2021] EWHC 2690 (Pat) |
| Various paragraphs in s.17 and 18 | Updated to take account of a standardised format for reporting plurality of invention to applicants |
| SPM 8.10.1 | Updated in light of Chiesi Farmaceutici S.P.A (BL O/019/22 |
| Paragraph | Update |
| 1.29.1 | Updated in light of G 01/19 (Pedestrian simulation) |
| 2.27.1 | Updated in light of Claydon v Mzuri [2021] EWHC 1007 (IPEC) |
| 55.05.1 | Updated in light of IPCom GmbH v Vodafone [2021] EWCA Civ 205 |
| 125.18.7 | Updated in light of Illumina Cambridge Ltd v Latvia MGI Tech SIA & Ors [2021] EWHC 57 (Pat) |
| Paragraph | Update |
| 1.09.4, 1.20.3, 1.21, 1.34.1, 1.38.1 | Updated to include Lenovo (Singapore) PTE Ltd v Comptroller General of Patents [2020] EWHC 1706 (Pat) |
| 3.39.2, 3.79.1, 3.81.3 | Updated to include Emson v Hozelock [2020] EWCA Civ 871. |
| 14.70.1, 14.82.1, 14.84 | Updated to include Regeneron Pharmaceuticals Inc v Kymab Ltd [2020] UKSC 27 |
| 76A.03.1 | Updated to include G3/19 (Pepper) |
| SPM 8.13 and SPM 13.01 | Updated to include Chugai Pharmaceutical Co. and Tadamitsu Kishimoto BL O/321/20 |
| SPM 1.04.1 and SPM 3.05.2 | Updated to include Santen SAS v Directeur général de l’Institut national de la propriété industrielle C-673/18 |
| Paragraph | Update |
|
14.93.2, 125.17.9 125.26.1 |
Updated to include Akebia Therapeutics Inc v Fibrogen Inc [2020] EWHC 866 (Pat) |
|
117.06.1 SPM12.03 SPM12.10 SPM13.02 SPM13.07 SPM14.01.2 |
Updated to include Genentech Inc v The Comptroller General of Patents [2020] EWCA Civ 475 |
| SPM3.02.5 | Updated practice as regards how the Office will determine if a product is protected by a Markush claim in light of Royalty Pharma Collection Trust v Deutsches Patent und Markenamt C-650/17 |
| Paragraph | Update |
| Section 1 | Updated to clarify the guidance relating to artificial intelligence inventions and the excluded matter guidance more generally. |
| 7.11.1, 13.10.1 | Updated to include BL O/741/19 (Stephen L Thaler’s application). |
| Various paragraph in sections 14, 18, 73, 125 | Updated in light of our changes in examination practice to ensure objections raised have a solid foundation in the law and that objections raised are necessary to the particular case. |
| 55.04, 55.05.1, 56.03 | Updated to include IPCom GmbH v Vodafone [2020] EWHC 132 (Pat) |
| Various sections | Various updates to reflect that the UK has left the EU with a transition period until December 2020, during which EU law continues to apply. |
| SPM3.02.6 to 3.02.6.1 | Updated SPC guidance in light of Court of Appeal decision in Teva & Ors v Gilead [2019] EWCA Civ 2272. |
| Paragraph | Update |
| 14.76, 14.80.1, 14.123.1 | Updated to include Anan Kasei v Neo Chemicals [2019] EWCA Civ 1646 |
| 15.07, 117.09.1 | Updated to include BL O/769/18 |
| 40.04.2, 41.04 | Updated to include Shanks v Unilever [2019] UKSC 45 |
| SPC | Various parts of the SPC section have been updated to include provisions on the SPC manufacturing waiver introduced by EU Regulation 2019/933, which entered into force on 1 July 2019. |
| Paragraph | Update |
| 21 | A whole chapter review of 21 has been undertaken to more clearly set out office practice with respect to third party observations. Corresponding revisions have been made throughout the manual to ensure references are correct. |
| 2.27.1 | Updated to include Emson v Hozelock Ltd & Others [2019] EWHC 991 (Pat) |
| 3.87-2 | Updated in light of Actavis Group PTC EHF v ICOS Corporation & Ors [2019] UKSC 15 |
| 17.106 - 108 | Updated to clarify office practice when there is doubt as to the presence of plurality in a claim set. |
| 39.11 | Updated to include Prosyscor Ltd v Netsweeper Inc & Ors [2019] EWHC 1302 (IPEC) |
| SPM3.04.2 | Updated in light of C-354/19 Novartis AG v Patent-och registreringsverket (PRV) |
| Paragraph | Update |
| 14.127 Updated in light of EPO Board of Appeal decision T 1218/14 (Dohler/DuPont Nutrition Biosciences) | |
| 15.21 Updated to clarify the extension regimes available when dealing with late filed divisionals. | |
| 125.17.7 Updated in light of Regan Lab SA v Estar Medical Ltd & Ors [2019]EWHC 63 (Pat) | |
| SPM3.05.2 Updated in light of judgment C-443/17 |
| Paragraph | Update |
|
4A. 14.72.1 60.16 60.19.2 125.14 |
Updated in light of Warner-Lambert Company LLC v Generics (UK) Ltd (t.a. Mylan) & Anor. [2018] UKSC 56. |
| 20.02.1 | Updated to include Akron Brass Company’s application BL O/012/19 |
| 125.17.8 | Updated in light of Technetix B.V and others v Teleste Ltd [2019] EWHC 126 (IPEC) |
| SPM3.02.6 |
| Paragraph | Update |
| 17.03 | Updated to note that the excess claims fee is part of the search fee so it follows that if the excess claims fee is not paid, the Patents Form 9A is considered not to have been filed. |
| 17.107 | Updated to note that if there is plurality and the first invention is excluded under s.1(2) but a later invention is not excluded, the examiner can search the first of the non-excluded inventions. |
| 20.02.2 | Updated to clarify that the compliance date does not roll over to the next working day if it falls on a non-working day (in light of Anning’s Patent Application [2007] EWHC 2770 (Pat)). |
| 125.17.6 | Updated in light of Icescape Ltd v Ice-World International BV & Ors [2018] EWCA Civ 2219. |
| SPM3.03.2 | Updated in light of C-527/17. |
| SPP3.02.2 | Updated to explain how authorisations under Regulations 1107/2009 are dealt with. |
| Paragraph | Update |
| 2.06.2 | Updated in light of Jushi Group Co. Ltd v OCV Intellectual Capital LLC [2018] EWCA Civ 1416. |
| 14.123.1 | Updated in light of Anan Kasei Co Ltd & Rhodia Operations SAS v Molycorp Chemicals & Oxides Ltd [2018] EWHC 843 (Pat). |
| 15.41 | Examining procedure where a divisional application is filed late such that it will be published after the end of the compliance period. |
| SPM3.02.6 | Updated in light of C-121/17 |
| Paragraph | Update |
|
14.66.1 14.70.1 |
Updated in light of Regeneron Pharmaceuticals v Kymab Ltd [2018] EWCA Civ 671 |
| 15.41 | Examining procedure where a divisional application is in order and the invention in suit was clearly claimed in the published parent application. |
| 18 and 19 | Examining procedure on the intention to grant process and its interaction with the grant fee. |
| 73.09 | Examining procedure updated with regard to s.73(2) action. |
| 75.12 | Added judgments which discuss the use of the Comptroller’s comments. |
| Paragraph | Update |
| 3.87.2 | Updated to add more detail on obvious to try section, including adding a reference to Novartis AG v Generics (UK) Ltd (trading as Mylan) [2012] EWCA Civ 1623. |
| 5.23.3 | Updated to include Unilin Beheer BV v Berry Floor NV [2004] EWCA (Civ) 1021. |
| 14.44 | Amended to note that drawings should not contain extensive textual matter. |
| 125.06 | Updated in light of L’Oréal Ltd v RN Ventures Ltd [2018] EWHC 173 (Pat) |
| Throughout | The manual has been updated throughout in light of the changes to patent fees, including the introduction of a grant fee which come into force on 6 April 2018. |
| Paragraph | Update |
| 2.03, 125.17.7 | Updated in light of Generics (U.K.) Limited and others v Yeda Research and Development Company Ltd and others [2017] EWHC 2629 (Pat). |
| 2.29.1 | Updated to note Memcor Australia Pty Ltd v Norit Membraan Technologie BV [2003] FSR 43. |
| 3.87.2, 125.17.7 | Updated in light of Actavis Group PTC EHF v ICOS Corporation & Ors [2017] EWCA Civ 1671 |
| 14.139.3, 125.18.6 | Updated to note that the test set out in Actavis v Eli Lilly [2017] UKSC 48 is for determining whether certain equivalents fall within the scope of protection of the claims. This test does not mean that all equivalents are protected by the claims. Therefore any general statement within the description stating that the scope of protection of the claims includes all equivalents is not allowable. |
| 89B.08 | Updated to note that the only situations in which rule 106(2)(a) is used to provide a refund of the excess search fee are when an international search report becomes available before the examiner starts the search and if the larger search fee has been paid unnecessarily. Under no circumstances can rule 106(2)(a) be used to refund the reduced search fee. |
| Paragraph | Update |
| 15.20.1 | Updated to note that when a divisional application is filed before the first examination report on the parent has been issued, the compliance date of the divisional is undefined until the first examination report is issued. |
| 15.22 | Updated to clarify that if a priority declaration on a divisional is not made or is determined to be invalid, there may be implications for the novelty of the divisional application. |
| 70-70F | New sections in light of the new chapters of The Patents Act added by the Intellectual Property (Unjustified Threats) Act 2017. |
| 125 | Updated in light of Actavis UK Limited and others v Eli Lilly and Company [2017] UKSC 48. |
| SPM3.02.5 | Updated in light of Sandoz Ltd & Anor v G.D. Searle & Anor [2017] EWHC 987 (Pat) |
| Paragraph | Update |
| 5.25.1-3 | Updated to include Novartis AG v Johnson & Johnson [2009] EWHC (Pat) 1671 and to provide further guidance on partial and poisonous priority. |
| 14.120.1 | A claim is a product by process claim if a product claim includes any method or process steps. Also, a product by process claim will result if a product claim incorporates a method or process step by reference to another claim. |
| 14.137 | Trademarks such as Bluetooth (RTM) and Wi-Fi (RTM) may be allowable in claims their use in certain claims may be regarded as unavoidable. |
| 18.07.1 | Updating the procedure for dealing with requests under the Patent Prosecution Highway. |
| 18.07.2 | When there is insufficient time remaining on the compliance date to allow for three months of publication, the issue of an intention to grant letter should be delayed to allow as much time as possible for section 21 observations to be filed without delaying beyond the compliance date. |
| 19.21 | Updating the procedure for processing voluntary amendments received after a report under s.18(4). |
| 123.10.3, 123.47-47.2 | Updated to provide further guidance on the procedure for dealing with lost, misdirected or delayed correspondence. |
| SPM3.02.6 | Updated in light of Teva UK & Ors v Gilead [2017] EWHC 13 (Pat). |
| SPM3.04 | Updated to include C-577/13 Actavis Group PTC EHF, Actavis UK Ltd v Boehringer Ingelheim Pharma GmbH & Co. KG. |
| Paragraph | Update |
| 4A.31 | Updated in light of Generics (UK) Ltd (t/a Mylan) v Warner-Lambert Company LLC [2016] EWCA Civ 1006. |
| 14.117.4 | Updated in light of Napp Pharmaceutical Holdings Ltd v Dr Reddy’s Laboratories (UK) Ltd [2016] EWCA Civ 1053. |
| 14.120 | Updated in light of Acumen Design Associates Ltd BL O/031/17. |
| 18.86.2 | Requests to forgo the intention to grant period are only able to be accepted after the notification of intention to grant letter has been issued. |
| 18.86.4 | A notification of intention to grant will be sent out on all applications including applications that are found in order for grant near or after the compliance date. |
| 18.86.5 | Rule 108(2) and rule 108(3) can be used to extend the compliance period after the notification of intention to grant letter has been sent out providing the application has not been sent to grant. Therefore it would be good practice for the applicant to request any extension to the compliance period before the date set out in the notification of intention to grant letter. |
|
19.21 19.22.1 |
Indicating the procedure for processing voluntary amendments received after a report under s.18(4). |
| 25.12 | Indicating that, from 6 April 2017, a renewal notice is issued to the last address specified for the purpose of receiving renewal notices by the proprietor. |
| 27.09.1 | Updated in light of MWUK Ltd v Fashion at Work Ltd BL O/531/16. |
|
60.16.1 60.19.2 |
Updated in light of Generics (UK) Ltd (t/a Mylan) v Warner-Lambert Company LLC [2016] EWCA Civ 1006. |
|
SPM1.04.1 SPM1.04.2 3.05 |
Updated in light of Abraxis Bioscience LLC v the Comptroller General of Patents [2017] EWHC 14 (Pat). |
| SPM5.04 | To assist in determining if particular compositions or acts infringe an SPC it is possible to request this Office gives a non-binding opinion on infringement. |
| Paragraph | Update |
| Section 1, Section 2, Section 3, Section 14, Section 17, Section 18 and Section 60 | Each of these sections has been updated to have a contents section. On the online version of MoPP this appears as ‘collapsible’ headings, while on the PDF version there are headings which link to the relevant part of each section. |
| Throughout | The manual has been updated throughout to remove references to the ambiguous term “early publication”. This term has been replaced with either “A-publication” or “accelerated publication” as appropriate. |
| 14.139.2 and 14.144 | Updated to provide additional examples of where support objections may arise. |
| 14.148 | To encourage the use of compact consistory clauses, where the statement of invention refers to the claims. This avoids repetition and often removes the necessity for redrafting the description following amendment of the claims. |
| 15.21 | Discretion under r.108(3), in relation to extending the compliance period to allow a divisional application to be filed, will normally be exercised only if the applicant shows that the circumstances are exceptional and that they have been properly diligent. |
| 15.41 | Examining procedure where a divisional application is in order and the invention in suit was clearly claimed in the published parent application. |
| 18.03.6 | Examining procedure where an application is in order for grant directly after a supplementary search. |
| 18.86.2 | Where the applicant would like an application to grant sooner than the date indicated in a notification of intention to grant letter, a written request must be submitted. |
| 21.14 | To clarify procedure where third party observations are received before the issue of a report under s.18(4) but too late to prevent its issue. |
| 89B.12.2 | If the substantive examiner disagrees with the International Search Authority’s assessment of plurality, and as a result determines that further searching is needed (bearing in mind 89B.12), this should be carried out without requiring an additional fee. |
| Paragraph | Update |
| 14.04.13 | It is no longer necessary to file duplicate 51s when one agent replaces another |
| 14.93-94 | A reference in a patent specification to a document containing information which is not essential for sufficiency need not be considered by the examiner; such references are allowable |
| 14.124 | From 6 April 2017 it will no longer be possible to include omnibus claims in UK patent applications, unless this is the only way to define the technical features of the invention clearly and concisely |
| 15.46 | To reflect that a notification of intention to grant will be issued before a patent is granted |
| 17.55 | To clarify that not all national document collections are classified to the CPC scheme, and a search should cover documents only classified to IPC |
| 17.115 | To indicate that where a priority claim is invalid or relinquished, a top-up search before 21 months from filing may not uncover all relevant s.2(3) prior art because some documents may not yet be published |
| 18.81 | To reflect notification of intention to grant procedure when an application is in order at first examination |
| 18.86, 18.86.1, 18.86.2 and 18.86.3 | Details of the notification of intention to grant procedure |
| 19.15.1 | Where a PCT application has entered the UK national phase and an international search report was issued during the international phase, the applicant may amend the specification of his own volition from the date of national phase entry until the date the first examination report is issued |
| 20A.03 | Reflecting simplified reinstatement deadline: a reinstatement request must be filed within 12 months beginning immediately after the date on which the application was terminated |
| 27.11.1 | Indicating that from 6 April 2017 it will not be possible to amend a granted patent to insert an omnibus claim |
| 32.06 | Rule 49(1) provides that any person may request that a correction or change be entered in the register or made to any application or other document filed at the Office in respect of his name or his address, or that a correction be made to his address for service |
| 75.07 | When amendments have been proposed during a hearing or following an interim decision the comptroller has discretion as to whether to advertise them in the Journal |
| 123.10.3 | Updated in light of Cypress Semiconductor Corporation’s Application (BL O/326/16(PDF, 88.5 KB)) |
| Paragraph | Update |
| 4A.08 to 4A.10 | Expanded guidance on methods of surgery, based on Enlarged Board of Appeal decision G 01/07 and Virulite Ltd’s Application BL O/058/10 |
|
4A.22 4A.28.3 4A.31 |
Revised guidance on first and second medical use claims in relation to inactive carriers or excipients, non-medical uses and apparatus |
| 4A.31 | Expanded guidance on novelty of second medical use claims |
| 17.96.1 to 17.96.2 | Updated guidance on how examiners should respond when search would serve no useful purpose – indicating that issuing an examination report before search is very rarely appropriate |
| 17.111 | To indicate that the filing of a large number of further searches (under s.17(6)) is undesirable – for efficiency and fairness the examiner should consider carrying out fewer searches than requested |
| 17.113 | Where multiple search requests are filed before the initial search report has issued, the search examiner will normally search only the first invention |
| 17.122 | Clarifying the circumstances in which a further search and fee (under s.17(8)) may be required |
|
18.10.1 to 18.10.4 18.64 18.85 |
Updated to clarify practice around family matching, equivalents, and online file inspection |
| 73.04.1 to 73.04.3 | Updated procedure for revocation process under s.73(1A) |
| Paragraph | Update |
| 1.15.1 | Updated in light of Astron Clinica Ltd & Ors v The Comptroller General of Patents, Designs and Trade Marks [2008] |
|
2.12.3 2.12.3.1 |
Updated to clarify interpretation of “adapted to” and “constructed to” |
| 2.22.1 | In light of Unwired Planet International Ltd v Huawei Technologies Co Ltd & Ors [2015] EWHC 3366 |
| 3.30.3 | In light of Generics (UK) Ltd (t/a Mylan) v Warner-Lambert Company LLC [2015] EWHC 2548 |
| 17.120 | Updated to clarify the circumstances where request may be made under s.17(8) for a further search |
| 27.11 | To remove reference to Enlarged Board of Appeal decision G 3/14 |
| 100.04 | In light of Elektron Ltd v Molycorp Chemicals & Oxides (Europe) Ltd & Anor [2015] EWHC 3596 |
|
SPM 3.02.6 SPM 3.03.1 |
Updated in light of BL O/117/16 |
| Paragraph | Update |
|
4A.29.1 4A.31 |
In light of Hospira UK Ltd v Genentech Inc [2014] EWHC 1094, Warner-Lambert Company, LLC v Actavis Group Ptc EHF & Ors [2015] EWCA Civ 556, and Generics (UK) Ltd (t/a Mylan) v Warner-Lambert Company LLC [2015] EWHC 2548 |
| 5.23.2 | Hospira UK Ltd v Genentech Inc [2014] EWHC 1094 |
| 14.124 | Updated in light of Jansen Betonwaren B.V. v Ian Robbie Christie (BL O/496/15) on the construction of omnibus claims |
| 18.97 | To indicate that assessment of conflict under sections 18(5) and 73(2) is unaffected by Koninklijke Philips Electronics n.v. v Nintendo of Europe GmbH [2014] EWHC 1959 (Pat) |
| 20.08 | Updated in light of Aujla v Sanghera [2004] EWCA Civ 121 |
| 27.11 | Relating to EPO Enlarged Board of Appeal decision G3/14 and the examination of post grant amendments unders.14(5) |
|
60.16.1 60.19.2 |
In light of Generics (UK) Ltd (t/a Mylan) v Warner-Lambert Company LLC [2015] EWHC 2548, Warner-Lambert Company, LLC v Actavis Group Ptc EHF & Ors [2015] EWCA Civ 556, and Actavis UK Ltd & Ors v Eli Lilly & Company [2015] EWCA Civ 555 |
| 75.05.1 | Indicating criteria for objecting to conflict resulting from post grant amendment, as given in Koninklijke Philips Electronics n.v. v Nintendo of Europe GmbH [2014] EWHC 1959 (Pat) |
| 123.47.1 | Providing further guidance on procedure for responding to reports of lost post |
|
SPM sections: 2.01 3.03.2 8.03.1 13.05.1 |
SPC section updated in light of Angiotech Pharmaceuticals Inc. and University of British Columbia (BL O/466/15), Leibniz-Institut für Neue Materialien Gemeinnützige GmbH (BL O/328/14) and Seattle Genetics Inc. v Österreichisches Patentamt (C-471/14) |
October 2015 changes
| Paragraph | Update |
| 2.12.3 | Updated in light of Schenck Rotec GmbH v Universal Balancing Limited [2012] EWHC 1920 regarding construction of the claimed phrase “constructed to receive” |
| 14.117.2-3 | In light of Smith & Nephew Plc v Convatec Technologies Inc [2015] EWCA Civ 607 |
| 17.102 | To indicate that the search examiner must classify applications even if an abstract has not been filed |
| 21.02, 21.02.1, 21.03, 21.05 | To reflect that Examiner Assistants are taking over some administrative aspects of handling s.21 observations, and to indicate that requests for anonymity will be treated as requests for confidentiality |
| 29.03 | Updated in light of Genentech Inc’s patent (BL O/360/14) |
| 73.07 | To indicate that the RC31 PROSE clause has been updated so that it no longer needs to be modified when an EP equivalent has already been granted |
| 123.47.1 | To indicate that r.111 cannot be used to extend a time period which has already expired, and to reflect procedure for handling reports of lost or misdirected correspondence |
July 2015 changes
| Paragraph | Update |
| 14.41,Code of Practice: point 5 | Indicating that drawings may include shading, that black and white photographs are allowable so long as they are clear enough to be reproduced, and that colour drawings and photographs are not allowable |
| 17.115 | Clarifying when databases are up to date for top-up searching purposes |
| 17.94.5 | Indicating that an Action Before Search (ABS) letter should not be issued as a response to a request for a further search under s.17(6) |
| 18.47.1 | Corrected to indicate that an Abbreviated Exam Report based on an IPRP should be booked as a completed examination in PAFS |
| 18.52 18.80 | Practice in relation to offering hearings clarified |
| 76.15.0 | Updated in light of Koninklijke Philips Electronics NV v Nintendo of Europe GmbH [2014] EWHC 1959 (Pat) |
| SPM 8.10 | Updated in light of Otsuka Pharmaceuticals Company Limited |
| Notices | Updated to include recent Practice Notices |
| Table of cases | Updated accordingly |
April 2015 changes
| Paragraph | Update |
| 1.17.2, 1.21, 1.21.2, 1.38.5 | Updated in light of Lantana Ltd v Comptroller General of Patents [2014] EWCA Civ 1463 to give further information on the relationship between excluded matter with novelty and inventive step, the AT&T signposts, and on determining ‘the contribution’. |
| 14.117.2 | Updated in light of Smith & Nephew Plc v Convatec Technologies Inc & Anor [2013] EWHC 3955 to give further guidance on determining the limits of a numerical range. |
| 14.135 | Updated in view of Jarden Consumer Solutions (Europe) Ltd v SEB SA & Anor [2014] EWCA Civ 1629. |
| 14.171,15A.03, 17.03, 17.94.5 | To indicate the procedures of the Private Applicant Unit. |
| 18.47.1, 89B.15.1 | Updated to indicate that IPRPs or IPERs may be reissued as an abbreviated examination report, when national phase examination takes place. |
| 61.04.3 | Updated in light of Les Laboratoires Servier & Anor v Apotex Inc & Ors (Rev 1) [2014] UKSC 55. |
| 75.15.1 | Updated in light of Ability International v Monkey Tower BL O/484/14. |
| 76.15.0 | Updated in light of AP Racing Ltd v Alcon Components Ltd [2014] EWCA Civ 40. |
| 76A.02.01 76A.02.02 | Updated in light of International Stem Cell Corporation (Judgment) [2014] EUECJ C-364/13. |
| 89.03, 89.03.1, 89A.07, 89A.14.1, 89A.14.2, 89B.10-89B12.1 | Giving information on Supplementary International Searches, and on the circumstances in which re-searching and top-up searching are performed in the national phase. |
| 89B.12.2 | To reflect procedure where the International Searching Authority has issued a declaration under a. 17(2) of the PCT that no International Search Report has been established. |
| 89B.16 | Indicating the procedure for considering third party observations received in the international phase. |
| 130.05 | Updated in light of Future New Developments Ltd v B & S Patente Und Marken GmbH [2014] EWHC 1874 (IPEC). |
| SPM1.04.1 | Updated in light of Forsgren v Österreichisches Patentamt C-631/13. |
| SPM3.02.4 | Updated in light of Ichan School of Medicine at Mount Sinai BL O552/14. |
| SPM3.02.6 | Updated in light of Eli Lilly & Company v Human Genome Sciences Inc [2014] EWHC 2404 (Pat). |
| SPM8.03.1, SPM13.05.1 | Updated in light of Seattle Genetics Inc. C-471/14. |
| Table of cases, Index | Updated accordingly |
January 2015 changes
| Paragraph | Update |
| 2.08 | Updated to reflect that prior disclosures should be read in light of CGK of skilled person at the date of disclosure (as in Teva UK Limited & another v AstraZeneca AB [2014] EWHC 2873) |
| 3.30.0 | Updated in light of Teva UK Limited & another v AstraZeneca AB [2014] EWHC 2873 (Pat) to indicate that CGK may in some circumstances include material readily identified in a literature search |
| 4.05 | Update to refer to Peter Crowley v United Kingdom Intellectual Property Office [2014] |
| 4A.27.1 4A.12 18.97.1 | Updated in light of EPO Technical Board of Appeal decisions in T 250/05, T 1790/12 and T 879/12 relating to double patenting and 2nd medical use claims |
| 15.21 | Updated in light Fergusson’s Application, BL O/272/09 and Knauf Insulation’s Application BL O/098/13 |
| 17.77 | Updated to clarify practice on the use of the phrase “at least” in search reports |
| 17.05.1 | Updated to clarify that how the Office considers Green Channel acceleration requests |
| 17.45 17.104.1 18.10 | Updated to reflect Office practice on requiring or providing translations of citations |
| 61.07 | Updated to refer to IPcom GmbH & Co Kg v HTC Europe Co Ltd & Ors [2013] EWCA Civ 1496 |
| 71.02 | Updated to include reference to Actavis v Pharmacia [2014] EWHC 2265 (Pat) and IPcom GmbH & Co Kg v HTC Europe Co Ltd & Ors [2013] EWCA Civ 1496 |
| 72.42 | Update to clarify the circumstances in which amendments proposed during revocation or infringement proceedings must be advertised |
| 76.15.5 | Updated in light of Teva UK Limited & another v AstraZeneca AB [2014] EWHC 2873 (Pat) |
| 76.15.2 76.26 | Updated information relating to 2nd medical use claims |
| 123.47.1 | Updated to clarify use of rule 111 in light of BL O/234/14 |