Manual of Patent Practice

Changes to the Manual of Patent Practice

This section details the recent main changes to the manual.

July 2017 changes

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.

March 2017 changes

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.

December 2016 changes

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.

October 2016 changes

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)

July 2016 changes

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)

April 2016 changes

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

January 2016 changes

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)

2015 changes

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