Statutes
Patents
PATENTS RULES 1995
as amended at 1 April 2007
The Patents Rules 1995 (and amending legislation) is reproduced under the terms of Crown Copyright Policy Guidance issued by HMSO.
The Secretary of State, in exercise of the powers conferred upon him by sections 5(2), 8(3), 12(6),13(1)and (3),14 (1) and (6), 15(2),(3) and(5), 16(1), 17(1),(2) and(8), 18(1) and (4), 19(1), 20(1), 21(1), 24(2), 25(3) and (5), 28(1), (1A) and (2A), 32(2), (5), (6) and (7), 40(1) and (2), 47(3) and (6), 52(1), 77 (6), 78(4), 80(3), 81(2)(b) and (2)(c), 89, 89A, 92(3) and (4), 97 (1)(d), 118(1) and (3)(b), 120(1), 123(1) to (3A), (6) and (7), 124, 125A(1), (2) and (3), 127(6) and 130(2) of, and paragraph 4A(5) of Schedule 1 and paragraph 14 of Schedule 4 to, the Patents Act 1977 after consultation with the Council on Tribunals pursuant to section 8(1) of the Tribunals and Inquiries Act 1992, hereby makes the following Rules:-
PRELIMINARY
Citation and commencement
1. These Rules may be cited as the Patents Rules 1995 and shall come into force on 4th September 1995.
Interpretation
"the Act" means the Patents Act 1977;
"the 1949 Act" means the Patents Act 1949;
"declared priority date" means-
(a) the date of filing of the earliest relevant application specified in a declaration made for the purposes of section 5 where the priority date claimed in the declaration has not been lost or abandoned and where the declaration has not been withdrawn before preparations for the publication of the application in suit have been completed by the Patent Office in accordance with section 16;
(b) the date of filing of any such application for a patent as is referred to in section 127(4) which is specified in a declaration made for the purposes of that section;
(c) where an application for a European patent (UK) is, by virtue of section 81 (1), to be treated as an application for a patent under the Act, the date of filing of the earliest previous application mentioned in the declaration of priority filed by the applicant in respect of the application for a European patent (UK) under Article 88(1) of the European Patent Convention where the priority date claimed in the declaration has not been lost or abandoned and where the declaration has not been withdrawn before the comptroller directs that the application for a European patent (UK) shall be so treated; or
(d) where an international application for a patent (UK) is to be treated as an application for a patent under the Act, the date of filing of the earliest application filed in or for a State which is a party to the Convention for the Protection of Industrial Property signed at Paris on 20th March 1883 the priority of which is claimed in a declaration filed for the purposes of Article 8 of the Patent Co-operation Treaty, provided that such priority claim has not been lost or abandoned under the provisions of that Treaty;“EEA state” means a member State, Iceland, Liechtenstein or Norway;
"Journal" means the journal published in accordance with rule 115;"the initiation date" shall be the date the new application was initiated by documents, containing the information mentioned in any of paragraphs (a) to (c) of section 15(1), being filed at the Patent Office;
"termination" has the meaning given by section 20B(7) and "terminated" shall be construed accordingly.
Construction
3. In these Rules, save where otherwise indicated-
(a) references to a section are references to that section of the Act;
(b) references to a rule are references to that rule in these Rules;
(c) references to a Schedule are references to that Schedule to these Rules;
(d) NO LONGER HAS EFFECT, Patents Act 2004 (Commencement No. 1 and Consequential and Transitional Provisions) Order 2004;and references to the filing of a form or other document are references to filing it at the Patent Office.
Forms
4.- (1) The forms of which the use is required by these Rules are those set out in directions under section 123(2A) (but this is without prejudice to rule 121(1)).
(2) Such a requirement to use a form is satisfied by the use of -
(a) a form which is a replica of the form set out in such directions; or
(b) a form which is acceptable to the comptroller and contains the information required by the form as so set out.(2A) Such directions shall be published in accordance with rule 115(2)
(3) A requirement under these Rules to use a form shall not apply if the comptroller, in directions made under section 124A, directs that the information required may be presented in some other manner.
4A. Where a document is delivered to the comptroller in electronic form or using electronic communications, a requirement in these Rules for the document to be delivered to the comptroller with a copy or copies of that document or in duplicate or triplicate shall not apply if the requirement is removed or varied by the comptroller in directions made under section 124A.
International exhibitions
5.-(1) An applicant for a patent who wishes the disclosure of matter constituting an invention to be disregarded in accordance with section 2( 4)(c) shall, at the time of filing the application for the patent, inform the comptroller in writing that the invention has been displayed at an international exhibition.
(2) The applicant shall, within four months of filing the application, file a certificate, issued at the exhibition by the authority responsible for the exhibition, stating that the invention was in fact exhibited there. The certificate shall also state the opening date of the exhibition and, where the first disclosure of the invention did not take place on the opening date, the date of the first disclosure. The certificate shall be accompanied by an identification of the invention, duly authenticated by the authority.
(3) For the purposes of section 130 (2) a statement may be published in the Journal that an exhibition described in the statement falls within the definition of international exhibition in subsection (1) of that section.
(4) In the case of an international application for a patent (UK), the application of this rule shall be subject to the provisions of rule 85(3).
Declaration of priority for the purposes of section 5(2)
6.-(1) Subject to paragraph (2) and rule 6A(4), a declaration for the purposes of section 5(2) shall be made at the time of filing the application for a patent.
(2) Subject to rule 6A(4), a declaration for the purposes of section 5 (2) may be made after the date of filing provided that -
(a) it is made on Patents Form 3/77;
(b) it is made before the end of the period of sixteen months starting immediately following the date of filing of the earlier relevant application (or if there is more than one, the earliest of them) specified in that declaration; and
(c) the condition in paragraph (3) is met.(3) The condition is that -
(a) the applicant has not made a request under section 16(1) to publish the application during the period prescribed for the purposes of that section; or
(b) any request made was withdrawn before the preparations for the publication of the application by the Patent Office had been completed.(4) A declaration for the purposes of section 5(2) shall specify -
(a) the date of filing of each earlier relevant application; and
(b) the country in or for which it was made.(5) In the case of a new application to which section 15(9) applies, no declaration shall be made which has not also been made in or in connection with the earlier application.
(6) For the purposes of rules 6B and 6C, "priority application" means an earlier relevant application specified in the declaration.
Request to the comptroller for permission to make a late declaration under section 5(2B)
6A.-(1) The period prescribed for the purposes of section 5(2A)(b) shall be the period of two months.
(2) A request under section 5(2B) shall be -
(a) made on Form 3/77; and
(b) supported by evidence of why the application in suit was not filed before the end of the period allowed under section 5(2A)(a).
(2A) Such a request may only be made where –
(a) the condition in paragraph (3) is met; or
(b) the request is made in relation to an international application for a patent (UK).
(3) The condition is that -
(a) the applicant has not made a request under section 16(1) to publish the application during the period prescribed for the purposes of that section; or
(b) any request made was withdrawn before the preparations for the publication of the application by the Patent Office had been completed.(4) Where an applicant makes a request under section 5(2B), he shall make the declaration for the purposes of section 5(2) at the same time as making that request.
Filing of priority documents to support a declaration under section 5(2)
6B.-(1) In respect of each priority application to which this paragraph applies the applicant shall, before the end of the period of sixteen months starting on the declared priority date, furnish to the Patent Office the file number of that application; otherwise the declaration made for the purposes of section 5(2), in so far as it relates to the priority application, shall be disregarded.
(2) In respect of each priority application to which this paragraph applies the applicant shall, before the end of the period of sixteen months starting on the declared priority date, furnish to the Patent Office a copy of that application duly certified by the authority with which it was filed or otherwise verified to the satisfaction of the comptroller; otherwise the declaration made for the purposes of section 5(2), in so far as it relates to the priority application, shall be disregarded.
(3) Paragraph (1) applies to every priority application except where -
(a) the application in suit is treated as an application for a patent under the Act, by reason of a direction given under section 81, and the file number of the priority application was indicated in compliance with rule 38(2) of the Implementing Regulations to the European Patent Convention; or
(b) the application in suit is an international application for a patent (UK) and the file number of the priority application was indicated in compliance with rule 4.10(a) and (b) of the Regulations made under the Patent Co-operation Treaty.(4) Paragraph (2) applies to every priority application except where -
(a) the application in suit is treated as an application for a patent under the Act, by reason of a direction given under section 81, and a certified copy of the priority application was filed in compliance with rule 38(3) of the Implementing Regulations to the European Patent Convention;
(b) the application in suit is an international application for a patent (UK) and a certified copy of the priority application was filed in compliance with rule 17.1 of the Regulations made under the Patent Co-operation Treaty; or
(c) the priority application or a copy of the priority application is kept at the Patent Office.Translation of priority documents
6C.-(1) The comptroller may direct the applicant to comply with the requirements of paragraph (4), if -
(a) a copy of the priority application -
(i) was furnished in accordance with rule 6B(2);
(ii) was filed in compliance with rule 38(3) of the Implementing Regulations to the European Patent Convention;
(iii) was filed in compliance with rule 17.1 of the Regulations made under the Patent Co-operation Treaty; or
(iv) has been made by the comptroller in accordance with rule 112A(2);(b) that copy is in a language other than English; and
(c) the matters disclosed in the priority application are relevant to the determination of whether or not an invention, to which the application in suit relates, involves an inventive step.
(2) In his direction under paragraph (1), the comptroller shall specify a period within which the applicant must comply with the requirements of paragraph (4).
(3) The comptroller shall not specify a period under paragraph (2) that ends after the grant of the patent.
(4) Where the comptroller has given a direction under paragraph (1), the applicant shall, before the end of the period specified by the comptroller, file -
(a) an English translation of the priority application; or
(b) a declaration that the application in suit is a complete translation into English of the priority application,otherwise the declaration made for the purposes of section 5(2), in so far as it relates to the priority application, shall be disregarded.
RIGHT TO APPLY FOR AND OBTAIN A PATENT
References under section 8(1)(a) or 12(1)(a)
7.-(1) A reference under section 8(1)(a) or 12(1)(a) shall be made on Patents Form 2/77 and shall be accompanied by a copy thereof and a statement in duplicate setting out fully the nature of the question, the facts upon which the person making the reference relies and the order or other relief which he is seeking.
(2) The comptroller shall send a copy of the reference and statement to-
(a) any person (other than the person referred to in paragraph (1) above) alleged in the reference to be entitled to be granted a patent for the invention;
(b) any person, not being a party to the reference, who is shown in the register as having a right in or under the patent application;
(c) where the application for the patent has not been published, any person (not being a party to the reference) who is an applicant for the patent or has given notice to the comptroller of a relevant transaction, instrument or event; and
(d) every person who has been identified in the patent application or a statement filed under section 13(2)(a) as being, or being believed to be, the inventor or joint inventor of the invention.other than any person who has consented in writing to the reference.
(3) If any person who is sent a copy of the reference and statement under paragraph (2) above wishes to oppose the making of the order or the granting of the relief sought, he ("the opponent") shall, within the period of six weeks beginning on the date the copies are sent to him, file in duplicate a counter-statement setting out fully the grounds of his opposition and the comptroller shall send a copy of the counter-statement to the person making the reference and to those recipients of the copy of the reference and statement who are not party to the counterstatement.
(4) The person making the reference or any such recipient may, within the period of six weeks beginning on the date when the copy of the counter-statement is sent to him, file evidence in support of his case and shall send a copy of the evidence,-
(a) in any case, to the opponent; and
(b) in the case of evidence filed by such a recipient, to the person making the reference.(5) Within the period of six weeks beginning on the date when the copy of such evidence is sent to him or, if no such evidence is filed, within six weeks of the expiration of the time within which it might have been filed, the opponent may file evidence in support of his case and shall send a copy of the evidence so filed to the person making the reference and those recipients; and within the period of six weeks beginning on the date when the copy of the opponent's evidence is sent to him, that person or any of those recipients may file further evidence confined to matters strictly in reply and shall send a copy of it to the persons mentioned in subparagraphs (a) and (b) of paragraph (4) above.
(6) No further evidence shall be filed except by leave or direction of the comptroller.
(7) The comptroller may give such directions as he may think fit with regard to the subsequent procedure.
References by co-proprietors under section 8(1)(b) or 12(1)(b)
8.-(1) A reference under section 8(1)(b) or 12(1)(b) shall be made on Patents Form 2/77 and shall be accompanied by a copy thereof and a statement in duplicate setting out fully the nature of the question, the facts relied upon by the co-proprietor making. the reference and the order which is seeking.
(2) The comptroller shall send a copy of the reference and statement to-
(a) each co-proprietor who is not a party to the reference and who has not otherwise indicated his consent to the making of the order sought;
(b) any person to whom it is alleged in the reference that any right in or under an application for a patent should be transferred or granted;
(c) any person, not being a party to the reference, who is shown in the register as having a right in or under the patent application;
(d) where the application for the patent has not been published, any person (not being a party to the reference) who has given notice to the comptroller of a relevant transaction, instrument or event; and
(e) every person who has been identified in the patent application or a statement filed under section 13( 2)(a) as being, or being believed to be, the inventor or joint inventor of the invention.other than the co-proprietor making the reference under section 8(1)(b) or 12(1)(b)
(3) Any person who receives a copy of the reference and statement and who wishes to oppose the order sought may, within the period of six weeks beginning on the date when the copies are sent to him, file a counter-statement in duplicate setting out fully the grounds of his opposition.
(4) The comptroller shall, as appropriate, send a copy of any counter-statement to-
(a) each co-proprietor who is a party to the reference; and
(b) any person to whom a copy of the reference and statement were sent pursuant to paragraph (2) above.(5) Any person who receives a copy of the counter-statement may, within the period of six weeks beginning on the date when the copy is sent to him, file evidence in support of his case and shall send a copy of the evidence so filed to the co-proprietor making the reference and to each person who has filed a counter-statement.
(6) Any person entitled to receive a copy of the evidence filed under paragraph (5) above may, within the period of six weeks beginning on the date when the copy is sent to him or, if no such evidence is filed, within six weeks of the expiration of the period within which it might have been filed, file evidence in support of his case and shall send a copy of the evidence so filed to each of the other parties listed in paragraph (4) above.
(7) Any person who receives a copy of the evidence filed under paragraph (6) above may, within the period of six weeks of the date when the copy is sent to him, file further evidence confined to matters strictly in reply and shall as appropriate send a copy of the evidence so filed to the parties listed in paragraph (4) above.
(8) No further evidence shall be filed by any party except by leave or direction of the comptroller.
(9) The comptroller may give such directions as he may think fit with regard to the subsequent procedure.
Orders under section 8 or 12
9.-(1) Where an order is made under section 8 or 12 -
(a) that an application for a patent shall proceed in the name of one or more persons none of whom was an original applicant; or
(b) that a new application for a patent may be made,the comptroller shall give notice of the making of the order to the original applicant or applicants, and to any of their licensees of whom he is aware.
(2) A person who makes a request under section 11(3) or (3A) must do so before the end of the relevant period.
(3) The relevant period is -
(a) where the request is made by an original applicant, the period of two months starting on the date the notice is sent to him;
(b) where the request is made by a licensee, the period of four months starting on the date the notice is sent to him.(4) In this rule, a reference to section 11 includes a reference to that section as applied by section 12(5).
Prescribed period for new applications under section 8(3) or 12(6)
10. The prescribed period for the purposes of sections 8(3) and 12(6) shall be three months calculated from the day on which the time for appealing from an order made under either of those subsections expires without an appeal being brought or, where an appeal is brought, from the day on which it is finally disposed of.
Authorisation under section 8(5)
11.-(1) An application under section 8(5) for authority to do anything on behalf of a person to whom directions have been given under section 8(2)(d) or (4) shall be made on Patents Form 2/77 and shall be accompanied by a copy thereof and a statement in duplicate setting out fully the facts upon which the applicant relies and the nature of the authorisation sought.
(2) The comptroller shall send a copy of the application and statement to the person alleged to have failed to comply with the directions.
(3) The comptroller may give such directions as he may think fit with regard to the subsequent procedure.
Request by joint applicant under section 10 or 12(4)
12.-(1) A request under section 10 or section 12(4) by a joint applicant shall be made on Patents Form 2/77 and shall be accompanied by a copy thereof and a statement in duplicate setting out fully the facts upon which he relies and the directions which he seeks.
(2) The comptroller shall send a copy of the request and statement to each other joint applicant who shall, if he wishes to oppose the request, within the period of six weeks beginning on the date when such copies are sent to him, file in duplicate a counter-statement setting out fully the grounds of his opposition; and the comptroller shall send a copy of the counter-statement to the person making the request and to each other joint applicant who is not party to the counter-statement.
(3) The comptroller may give such directions as he may think fit with regard to the subsequent procedure.
Reference to the comptroller under section 11(5)
13.-(1) A reference under section 11(5) shall be made on Patents Form 2/77 and shall be accompanied by a copy and by a statement in duplicate setting out fully -
(a) the question referred;
(b) the facts upon which the person making the reference relies; and
(c) the period or terms of the licence which he is prepared to accept or grant.(2) The comptroller shall send, except to the person who made the reference, a copy of the reference and statement to -
(a) every person in whose name the application is to proceed or, as the case may be, who makes the new application; and
(b) every person claiming to be entitled to be granted a licence,and any such person who receives a copy of the reference and statement may, before the end of the period of six weeks starting on the date the copies were sent to him, file a counter-statement (which must be in duplicate) setting out fully his grounds of objection.
(3) The comptroller shall send a copy of the counter-statement to the person who made the reference.
(4) The comptroller may give such directions as he thinks fit with regard to the subsequent procedure.
(5) In this rule, a reference to section 11 includes a reference to that section as applied by section 12(5).
INVENTORS
Mention of inventor under section 13
14.-(1) An application to the comptroller under section 13(1) or (3) by any person who
alleges-
(a) that any person ought to have been mentioned as the inventor or joint inventor of an invention in any patent granted or published application for a patent for the invention; or
(b) that any person mentioned as sole or joint inventor in any patent granted or published application for a patent for the invention ought not to have been so mentioned,shall be made on Patents Form 2/77 and shall be accompanied by a copy thereof and a statement in duplicate setting out fully the facts relied upon.
(2) The comptroller shall send a copy of any such application and statement to-
(a) every person registered as proprietor of, or applicant for, the patent;
(b) every person who has been identified in the patent application or a statement filed under section 13( 2)(a) as being, or being believed to be, the inventor or joint inventor of the invention; and
(c) every other person whose interests the comptroller considers may be affected by the application;other than the applicant under section 13( 1) or (3) and any person who has consented in writing to the application.
(3) Any recipient of such a copy of an application and statement who wishes to oppose the application shall, within the period of six weeks beginning on the date when the copies are sent to him, file a counter-statement in duplicate setting out fully the grounds of his objection and the comptroller shall send a copy of the counter-statement to each of the persons described in this rule other than any person who is party to the counter-statement.
(4) The comptroller may give such directions as he may think fit with regard to the subsequent procedure.
(5) The document prescribed for the purposes of section 13(1) shall be an addendum or erratum.
(6) This procedure shall not apply where the question of inventorship by the inventor or joint inventor is put in issue by a reference under section 8 or 37.
Procedure where applicant is not the inventor or sole inventor
15.-(1) Subject to rules 26, 81(3), 82(3), 85(7) and 85(7A)(a), the period prescribed for the purposes of section 13(2) shall be -
(a) where there is no declared priority date, the period of sixteen months starting on the date of filing the application;
(b) where there is a declared priority date, the period of sixteen months starting on that date.(1A) A statement filed under section 13 (2) shall be made on Patents Form 7/77.
(2) Where the applicant is not the sole inventor or the applicants are not the joint inventors of the invention the subject of the application and the application does not contain a declared priority date which relates to an earlier relevant application as defined in section 5( 5)(b), a sufficient number of copies of Patents Form 7/77 shall be filed by the applicant or applicants within the said period to enable the comptroller to send one to each inventor who is not one of the applicants.
(3) NO LONGER HAS EFFECT, PATENTS (AMENDMENT) RULES 2004
(4) NO LONGER HAS EFFECT, PATENTS (AMENDMENT) RULES 2004
Waiving the right to be mentioned
15A.-(1) The inventor may, before preparations for the application's publication have been completed by the Patent Office, apply to the comptroller in writing to waive his right-
(a) to have his name and address mentioned as those of the inventor; or
(b) to have his address mentioned as that of the inventor.(2) An application by an inventor under paragraph (1)(a)-
(a) shall include his reasons for making the application; and
(b) shall be accepted by the comptroller where the comptroller is satisfied by those reasons.(3) An application by an inventor under paragraph (1)(b) shall be accepted by the comptroller.
(4) Where the comptroller has accepted an inventor's application to make a waiver under this rule, the inventor may apply to the comptroller to end that waiver.
(5) The comptroller may, if he thinks fit, accept an application to end a waiver, and his acceptance may be made subject to such conditions as he may direct.
(6) An application under paragraph (1)(a) or (b) or under paragraph (4) may also be made by a person who is not the inventor, but who has been identified as such for the purposes of section 13(2).
(7)Where a person makes an application in reliance on paragraph (6), the reference in this rule to an application to waive his right to have his name and address (or his address) mentioned shall be construed as a reference to an application not to have his name and address (or his address) mentioned (and paragraphs (4) and (5) are to be construed accordingly).
APPLICATIONS FOR PATENTS
Applications for the grant of patents under sections 14 and 15
16.-(1) A request for the grant of a patent shall be made on Patents Form 1/77.
(1A) Where the documents filed at the Patent Office to initiate an application for a patent did not include the applicant's name and address, the comptroller shall notify the applicant that his name and address are required.
(1B) Where the applicant has been notified under paragraph (1A), he shall, before the end of the period of two months starting on the date of the notification, file his name and address; otherwise the comptroller may refuse his application
(2) The specification contained in an application for a patent made under section 14 shall state the title of the invention and continue with the description and the claim or claims and drawings, if any, in that order, but, where the application is delivered in electronic form or using electronic communications, that order shall not apply to the extent that it has been removed or varied by the comptroller in directions made under section 124A and the specification shall comply with such directions.
(3) The title shall be short and indicate the matter to which the invention relates.
(4) The description shall include a list briefly describing the figures in the drawings, if any.
(5) Where -
(a) the documents filed at the Patent Office to initiate an application for a patent include something which is or appears to be a description of the invention in a language other than English; and
(b) the applicant has not filed -(i) a translation into English of that thing; or
(ii) a description of the invention in English, with a declaration that it is a complete and accurate translation into English of that thing,the comptroller shall notify the applicant that a translation or a description with a declaration is required.
(6) Where the applicant has been notified under paragraph (5), he shall, before the end of the period of two months starting on the date of the notification, file either a translation or a description with a declaration; otherwise the comptroller may refuse his application.
Biological material
17. Schedule 2 shall have effect in relation to certain applications for patents, and patents, for inventions which involve the use of or concern biological material.
Drawings
18.-(1) Drawings forming part of an application for a patent made under section 14 shall be on sheets the usable surface area of which shall not exceed 26.2 cm by 17 cm. The sheets shall not contain frames round the usable or used surface. The minimum margins shall be as follows-
top 2.5 cm
left side 2.5 cm
right side 1.5 cm
bottom 1.0 cm
(2) Drawings shall be executed as follows-
(a) without colouring in durable, black, sufficiently dense and dark, uniformly thick and well-defined lines and strokes to permit satisfactory reproduction;
(b) cross-sections shall be indicated by hatching which does not impede the clear reading of the reference signs and leading lines;
(c) the scale of the drawings and the distinctness of their graphical execution shall be such that a photographic reproduction with a linear reduction in size to two-thirds would enable all details to be distinguished without difficulty. If, as an exception, the scale is given on a drawing, it shall be represented graphically;
(d) all numbers, letters, and reference signs, appearing on the drawings shall be simple and clear and brackets, circles and inverted commas shall not be used in association with numbers and letters;
(e) elements of the same figure shall be in proportion to each other, unless a difference in proportion is indispensable for the clarity of the figure;
(f) the height of the numbers and letters shall not be less than 0.32 cm and for the lettering of drawings, the Latin and, where customary, the Greek alphabets shall be used;
(g) the same sheet of drawings may contain several figures. Where figures drawn on two or more sheets are intended to form one whole figure, the figures on the several sheets shall be so arranged that the whole figure can be assembled without concealing any part of the partial figures. The different figures shall be arranged without wasting space, clearly separated from one another. The different figures shall be numbered consecutively in arabic numerals, independently of the numbering of the sheets;
(h) reference signs not mentioned in the description or claims shall not appear in the drawings, and vice versa. The same features, when denoted by reference signs, shall, throughout the application, be denoted by the same signs;
(i) the drawings shall not contain textual matter, except, when required for the understanding of the drawings, a single word or words such as "water", "steam", "open", "closed", "section on AA", and, in the case of electric circuits and block schematic or flow sheet diagrams, a few short catchwords; and
(j) the sheets of the drawings shall be numbered in accordance with rule 20( 9).(3) Flow sheets and diagrams shall be considered to be drawings for the purposes of these Rules.
(4) Where the application for a patent is delivered in electronic form or using electronic communications, paragraphs (1) and (2) shall not apply to the extent that they have been removed or varied by the comptroller in directions made under section 124A and drawings forming part of that application shall comply with such directions.
The abstract
19.-(1) The abstract shall commence with a title for the invention.
(2) The abstract shall contain a concise summary of the matter contained in the specification. The summary shall indicate the technical field to which the invention belongs and be drafted in a way which allows a clear understanding of the technical problem to which the invention relates, the gist of the solution to that problem through the invention and the principal use or uses of the invention. Where appropriate, the abstract shall also contain the chemical formula which, among those contained in the specification, best characterises the invention. It shall not contain statements on the alleged merits or value of the invention or on its speculative application.
(3) The abstract shall normally not contain more than 150 words.
(4) If the specification contains any drawings, the applicant shall indicate on the abstract the figure or, exceptionally, the figures of the drawings which he suggests should accompany the abstract when published. The comptroller may decide to publish one or more other figures if he considers that they better characterise the invention. Each main feature mentioned in the abstract and illustrated by a drawing shall be followed by the reference sign used in that drawing.
(5) The abstract shall be so drafted that it constitutes an efficient instrument for the purposes of searching in the particular technical field, in particular by making it possible to assess whether there is a need to consult the specification itself.
Size and presentation of documents
20.-(1) All documents (including drawings) making up an application for a patent or replacing such documents shall be in the English language.
(2) [Repealed by The Patents (Amendment) Rules 2007 (SI 2007 No. 677)]
(3) All documents referred to in paragraph (1) above shall be so presented as to permit of direct reproduction by photography, electrostatic processes, photo offset and micro-filming, in an unlimited number of copies. All sheets shall be free from cracks, creases and folds. Only one side of the sheet shall be used, except in the case of a request for the grant of a patent.
(4) All documents referred to in paragraph (1) above shall be on A4 paper (29.7 em x 21 cm) which shall be pliable, strong, white, smooth, matt and durable. Each sheet (other than drawings) shall be used with its short sides at the top and bottom (upright position).
(5) The request for the grant of a patent and the description, claims, drawings and abstract shall each commence on a new sheet. The sheets shall be connected in such a way that they can easily be turned over, separated and joined together again.
(6) Subject to rule 18(1), the minimum margins shall be as follows:
top 2.0 cm
left side 2.5 cm
right side 2.0 cm
bottom 2.0 cm(7) The margins of the documents making up the application and of any replacement documents must be completely blank.
(8) In the application, except in the drawings-
(a) all sheets in the request shall be numbered consecutively; and
(b) all other sheets shall be numbered consecutively as a separate series,and all such numbering shall be in arabic numerals placed at the top of the sheet, in the middle, but not in the top margin.
(9) All sheets of drawings contained in the application shall be numbered consecutively as a separate series. Such numbering shall be in arabic numerals placed at the top of the sheet, in the middle, but not in the top margin.
(10) Every document (other than drawings) referred to in paragraph (l) above shall be typed or printed in a dark, indelible colour in at least 1 1/2; line spacing and in characters of which the capital letters are not less than 0.21 cm high:
Provided that Patents Form 1/77 may be completed in writing, and that graphic symbols and characters and chemical and mathematical formulae may be written or drawn, in a dark indelible colour.
(11) The request for the grant of a patent, the description, the claims and the abstract shall not contain drawings. The description, the claims and the abstract may contain chemical or mathematical formulae. The description and the abstract may contain tables. The claims may contain tables only if their subject-matter makes the use of tables desirable.
(12) In all documents referred to in paragraph (1) above units of weight and measures shall be expressed in terms of the metric system. If a different system is used they shall also be expressed in terms of the metric system. Temperatures shall be expressed in degrees Celsius. For the other physical values, the units recognised in international practice shall be used, for mathematical formulae the symbols in general use, and for chemical formulae the symbols, atomic weights and molecular formulae in general use shall be employed. In general, use should be made of technical terms, signs and symbols generally accepted in the field in question.
(13) If a formula or symbol is used in the specification a copy thereof, prepared in the same manner as drawings, shall be furnished if the comptroller so directs
(14) The terminology and the signs shall be consistent throughout the application.
(15) All documents referred to in paragraph (l) above shall be reasonably free from deletions and other alterations, overwritings and interlineations and shall, in any event, be legible.
(16) Where the application for a patent is delivered in electronic form or using electronic communications, paragraphs (2) to (10), (13) and (15) shall not apply to the extent that they have been removed or varied by the comptroller in directions made under section 124A and the application shall comply with such directions.
Form of statements, counter-statements and evidence
21. Any statement, counter-statement or evidence filed shall, unless the comptroller otherwise directs, comply with the requirements of rule 20( 1) and (4) and, except that both sides of the sheet may be used in the case of statutory declarations and affidavits, with the requirements of rule 20(3).
Unity of invention
22.- (1) Without prejudice to the generality of section 14(5)(d), where two or more inventions are claimed (whether in a single claim or in separate claims), and there exists between or among those inventions a technical relationship which involves one or more of the same or corresponding special technical features, then those inventions shall be treated as being so linked as to form a single inventive concept for the purposes of the Act.
(2) In this rule, "special technical features" means those technical features which define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
References under section 15(1)(c)(ii)
22A.-(1) A reference made under section 15(1)(c)(ii) shall include -
(a) the date of filing of the earlier relevant application;
(b) its application number; and
(c) the country in or for which it was made.(2) Subject to paragraph (3), the copy of the application provided under section 15(10)(b)(ii) shall -
(a) be duly certified by the authority with which it was filed; and
(b) where it is in a language other than English, be accompanied by -(i) a translation into English of that application; or
(ii) a declaration that the description filed under sub-paragraph (i) of section 15(10)(b) is a complete and accurate translation into English of the description contained in the application provided under sub-paragraph (ii) of that provision.(3) Where the application or a copy of the application is kept at the Patent Office it shall, for the purposes of section 15(10)(b)(ii), be treated as having been filed in accordance with rules.
Missing parts
23.- (1) Subject to paragraph (2), the period prescribed for the purposes of section 15(5)(b) and (6) shall be the period starting on the date of filing of the application for a patent and ending on the date of the preliminary examination.
(2) Where the applicant is notified under section 15A(9) that a drawing or part of the description of the invention has been found to be missing, the period prescribed for the purposes of section 15(5)(b) and (6) shall be the period of two months starting on the date of the notification.
(3) An applicant may only withdraw a missing part by giving written notice to the comptroller.
(4) A request made under section 15 (7)(b) shall be made in writing and shall -
(a) include sufficient information to identify where in the earlier relevant application or applications the contents of the document filed under section 15(5)(b) were included; and
(b) be made before the end of the period prescribed for the purpose of section 15(5)(b).(5) Any request under section 15 (7)(b) shall be considered never to have been made where -
(a) the earlier relevant application or applications do not contain every missing part filed under section 15 (5);
(b) the applicant fails to furnish to the Patent Office copies of all earlier relevant applications, duly certified by the authority with which they were filed, before the end of the relevant period.(6) Paragraph (5)(b) does not apply in respect of an earlier relevant application where that application or a copy of the application is kept at the Patent Office.
(7) The relevant period is the first to expire of -
(a) the period of sixteen months starting on the declared priority date; or
(b) the period of four months starting on the date the request was made under section 15(7)(b).New applications under section 15(9)
24.-(1) Subject to paragraph (2) below, a new application for a patent, which includes a request that it shall be treated as having as its date of filing the date of filing of an earlier application, may be filed in accordance with section 15(9) not later than the beginning of the third month before the end of the period ascertained under rule 34 in relation to the earlier application as altered, if that be the case, under rule 100 or rule 110 ("the rule 34 period");
Provided that, where the first report of the examiner under section 18 is made under subsection (4) and the comptroller notifies the applicant that the earlier application complies with the requirements of the Act and these Rules, notwithstanding the foregoing provisions of this paragraph but subject to paragraph (2) below, a new application may be filed not later than the expiry of the period of two months beginning on the day that the notification is sent.
(2) Where any of the following dates falls before the date ascertained under paragraph (1) above, a new application may only be filed before that date instead of the date so ascertained-
(a) the date when the earlier application is refused, is withdrawn, is treated as having been withdrawn or is taken to be withdrawn;
(b) the expiry of the rule 34 period ascertained in relation to the earlier application; and
(c) the date when a patent is granted on the earlier application.Periods prescribed for the purposes of section 15(10) and 17(1)
25.-(1) Subject to paragraph (4), the period prescribed for the purposes of section 15(10)(a) and (b)(i) shall be the relevant period.
(2) Subject to paragraph (4) and rules 81 (3), 82(3), 85(7) and 85(7A)(b), the period prescribed for the purposes of section 15 (10)(c) and (d) and section 17(1) shall be the relevant period.
(3) Subject to paragraph (4), the period prescribed for the purpose of section 15(10)(b)(ii) shall be the period of four months starting on the date of filing.
(4) Where a new application is filed under section 8(3), 12(6), 15(9) or 37(4) after the relevant period has expired -
(a) subject to sub-paragraph (b), the period prescribed for the purposes of section 15(10)(a) to (d) and section 17(1) shall be the period of two months starting on the initiation date; or
(b) where it is filed less than six months before the period prescribed by rule 34 is due to expire (including the expiry of any extension of that period), the period prescribed for the purposes of section 15(10) (a) to (d) and section 17(1) shall end on the initiation date.(5) The relevant period is -
(a) where there is no declared priority date, the period of twelve months starting on the date of filing of the application; or
(b) where there is a declared priority date, the last to expire of -(i) the period of twelve months starting on the declared priority date; or
(ii) the period of two months starting on the date of filing of the application.Extensions for new applications
26. Where a new application is filed under section 8(3), 12(6), 15(9) or 37(4) after the the expiry of the periods prescribed by rule 6B or rule 15(1) (or after the expiry of any extensions of those periods) -
(a) the requirements of rules 6 to 6B and rule 15 shall be complied with on the initiation date;
(b) the requirements of paragraph 1(2)(a)(ii), (2)(a)(iii) and (3) of Schedule 2 shall be complied with on the initiation date (or, if later, before the end of the relevant period ascertained under paragraph 1(3) of that Schedule)Publication of application
27.-(1) The period prescribed for the purposes of section 16 (1) shall be—
(a) where there is no declared priority date, the period of 18 months beginning with the date of filing of the application; or
(b) where there is a declared priority date, the period of 18 months beginning with that date.(2) Where a person's application under rule 15A(1)(a) or (b) has been accepted by the comptroller, the comptroller shall ensure that the application for the patent as published under section 16 does not mention his name and address as those of the person believed to be the inventor (or, as the case may be, his address as that of the person so believed).
EXAMINATION AND SEARCH
Preliminary examination under section 15A
28.-(1) On a preliminary examination the examiner shall determine whether the the application complies with the requirements of rules 6 to 6C.
(2) The examiner shall report to the comptroller his determinations under paragraph (1) and the comptroller shall notify the applicant accordingly.
28A.-(1) A request under section 17 (1)(c)(i) for a search shall be made on Patents Form 9A/77.
(2) The comptroller may, if he thinks fit, send to the applicant a copy of any document (or any part thereof) referred to in the examiner's report made under section 17(5).
Procedure where earlier application made
29.-(1) Where, on a preliminary examination, the examiner finds that a declaration made for the purposes of section 5(2) specifies a date of filing for an earlier relevant application -
(a) more than twelve months before the date of filing of the application in suit; or
(b) where the comptroller has given permission for a late declaration to be made under section 5 (2), more than fourteen months before the date of filing of the application in suit,he shall report this finding to the comptroller and the comptroller shall notify the applicant accordingly.
(2) Where the comptroller has notified the applicant under paragraph (1), the applicant shall, before the end of the relevant period, provide the comptroller with a corrected date; otherwise the declaration, in so far as it relates to the earlier relevant application, shall be disregarded.
(3) The relevant period is the period of two months starting on the date of the notification under paragraph (2).
(4) For the purposes of paragraph (2), "corrected date" means a date that would not have been reported by the examiner under paragraph (1).
Address for service
30.-(1) For the purposes of any proceeding under the Act or these Rules, an address for service shall by filed by -
(a) an applicant for the grant of a patent;
(b) a person who makes any other application or reference, or gives any notice of opposition, under the Act;
(c) any person opposing such an application, notice or reference.
(2) The proprietor of a patent, or any person who has registered any right in or under a patent or application, may file an address for service by notifying the comptroller.
(3) Where a person has provided an address for service under paragraph (1) or (2), he may substitute a new address for service by notifying the comptroller.
(4) An address for service filed under paragraph (1)(a) or (2) shall be an address in the United Kingdom, another EEA State or the Channel Islands.
(5) An address for service filed under paragraph (1)(b) or (c) shall be an address in the United Kingdom, unless in a particular case the comptroller otherwise directs.
Failure to provide an address for service
(a) a person has failed to file an address for service under rule 30(1); and
(b) the comptroller has sufficient information enabling him to contact that person,
the comptroller shall direct that person to file an address for service.
(2) Where a direction has been issued under paragraph (1), the person directed shall, before the end of the period of 2 months beginning with the date of the direction, file an address for service.
(3) Paragraph (4) applies where -
(a) a direction was given under paragraph (1) and the period prescribed by paragraph (2) has expired; or
(b) the comptroller has insufficient information to give a direction under paragraph (1),
and the person has failed to provide an address for service.
(4) Where this paragraph applies -
(a) in the case of an applicant for the grant of a patent, the application shall be treated as withdrawn; and
(b) in the case of a person mentioned in rule 30(1)(b), his application, reference or notice of opposition shall be withdrawn; and
(c) in the case of a person mentioned in rule 30(1)(c), he shall be deemed to have withdrawn from the proceedings.
(5) In this rule an “address for service” means an address which complies with the requirements of rule 30(4) or (5).
Formal requirements
31.-(1) The requirements of rules 16(1), 18(1) and (2) (other than those contained in paragraph (2)(h)), 20 (other than those contained in the last sentence of paragraph (11) and in paragraphs (12) and (14)) shall be formal requirements for the purposes of the Act.
(1A) Where any of the requirements referred to in paragraph (1) do not apply by virtue of rule 18(4) or rule 20(16), the formal requirements for the purposes of the Act shall include the requirements of so much of any directions given by the comptroller under section 124A as replace those requirements.
(2) Where the application is-
(a) an application for a European patent (UK); or
(b) an international application for a patent (UK)which, by virtue of section 81 or 89, as the case may be, is to be treated as an application for a patent under the Act, the said requirements of rules 16(1), 18(1) and (2) and 20 shall be treated as having been complied with to the extent that the requirements of the corresponding provisions of the Implementing Regulations to the European Patent Convention or, as the case may be, of the Regulations made under the Patent Co-operation Treaty, have been fulfilled.
Searches under section 17(6) and (8)
32.-(1) Where an examiner conducts a search under section 17(6) in relation to the first only of two or more inventions specified in the claims of an application, the Patent Office shall notify the applicant of that fact.
(2) If the applicant desires a search to be conducted under section 17(6) in relation to a second or subsequent invention specified in the claims, he shall, not later than the beginning of the third month before the end of the period prescribed under rule 34, as altered, if that be the case, under rule 100 or rule 110, request the Patent Office on Patents Form 9A/77 to conduct such a search and pay the search fee for each invention in respect of which the search is to be made.
(3) The fee for a supplementary search under section 17(8) shall be accompanied by Patents Form 9A/77.
(4) The comptroller may, if he thinks fit, send to the applicant a copy of any document (or any part thereof referred to in the examiner's report under section 17 pursuant to subsection (6) or (8) thereof.
Request for substantive examination under section 18
33.-(1) A request for a substantive examination of an application for a patent shall be made on Patents Form 10/77.
(2) Subject to the provisions of rules 83( 1), 85(7), 85 (7A)(c) and paragraphs (3) and (5) below, the request shall be made and the fee for the examination paid within six months of the date of publication of the application in accordance with section 16.
(3) Where an application is subject to directions under section 22(1) or (2), the request shall be made and the fee paid within two years of the declared priority date or, where there is no declared priority date, from the date of filing the application except in the case of a new application made under section 8( 3), 12(6) or 15(9) after the expiry of the said two years, when the request shall be made and the fee paid at the time of filing the new application.
(4) When he gives the applicant the opportunity under section 18(3) to make observations on the examiner's report under subsection (2) of that section, the comptroller may, if he thinks fit, send to the applicant a copy of any document (or part thereof) referred to in the report.
(5) Where a new application is filed under section 8(3), 12(6), 15 (9) or 37(4) then,-
(a) if the new application is filed within two years calculated from the declared priority date or, where there is no declared priority date, from the date treated as its date of filing, the request shall be made and the fee for the examination paid within those two years; and
(b) if the new application is filed after the expiration of those two years, the request shall be made and the fee for the examination paid at the time of filing the new application.Period for putting application in order
34.-(1) Subject to the provisions of paragraph (2) below and of rule 83( 3), for the purposes of sections 18( 4) and 20(1), the period within which an application for a patent shall comply with the Act and these Rules-
(a) subject to sub-paragraphs (b) and (c) hereof and paragraph (1A) below, shall be-
(i) the period of four years and six months calculated from its declared priority date or, where there is no declared priority date, from the date of filing of the application; or
(ii) the period of twelve months calculated from the date the first report under section 18 in respect of that application is sent to the applicant, whichever expires the later;(b) in the case of a new application for a patent arising from and made in accordance with an order of the comptroller under section 8(3), 12 (6) or 37(4), shall be-
(i) the period of four years and six months calculated from the declared priority date for the earlier application or, where there is no such declared priority date, the date of filing of the earlier application; or
(ii) the period of eighteen months calculated from the actual date of filing of the application,whichever expires the later;
(c) in the case of a new application under section 15(9), shall be the period determined in accordance with sub-paragraph (a) above in respect of the earlier application whose date of filing is to be treated under section 15(9) as the date of filing of the new application.
(1A) Where the first report under section 18 is not sent to the applicant before the expiry of the period prescribed by sub-paragraph (a)(i) of paragraph (1) above, that period shall be extended to such date as that report is sent to the applicant and the period specified by subparagraph (a)(ii) of paragraph (1) shall then apply.
(2) In a case where,-
(a) a third party makes observations under section 21 on an application;
(b) the examiner, for the first time in a report under section 18(3), relies upon the substance of those observations to report that the patentability requirements of the Act are not met; and
(c) following that report, and within the last three months of the period ascertained under paragraph (1) above (including any alteration thereof under rule100 or rule 110) the comptroller gives the applicant the opportunity under section 18(3) to make observations on the report and to amend the application,the period within which an application for a patent shall comply with the Act and these Rules shall expire at the end of the period of three months beginning on the date when the comptroller sends notification to the applicant of that opportunity.
Amendment of request for grant
35. Subject to rule 45(3), an application for amendment of the request for the grant of a patent shall-
(a) be made on Patents Form 11/77;
(b) clearly identify the proposed amendment; and
(c) state the reasons for it.Amendment of application before grant
36.-(1) An applicant may not amend the description, claims and drawings contained in his application except in accordance with the following provisions of this rule.
(2) Unless the comptroller so requires or consents, the applicant may not so amend before the comptroller sends to the applicant the examiner's report under section 17(5).
(3) After the comptroller has sent to the applicant the examiner's report under section 17(5) and before he sends to the applicant the first report of the examiner under section 18, the applicant may so amend of his own volition.
(4) After the comptroller has sent to the applicant the examiner's first report under section 18, the applicant may so amend once of his own volition provided that-
(a) where the report is made under-
(i) section 18(3), the amendment is filed at the same time as the applicant replies to that report, or
(ii) section 18( 4), the amendment is filed within two months of that report being sent to the applicant,except that-
(b) where the report referred to in sub-paragraph (a)(i) is made before preparations for publication of the application have been completed, the applicant may, in addition and prior to the amendment which may be made in accordance with that subparagraph, amend of his own volition the description, claims or drawings.
(5) The right to amend set out in paragraph (4) is in addition to an applicant's right under section 18(3) to amend the application so as to comply with the requirements of the Act and these Rules.
(6) Any further amendment to the description, claims or drawings which the applicant desires to make of his own volition may be made only with the consent of the comptroller following the filing of Patents Form 11/77 clearly identifying the proposed amendment and stating the reasons for it.
Reinstatement of applications under section 20A
36A.- (1) Any request under section 20A for the reinstatement of an application shall be made before the end of the relevant period.
(2) The relevant period is the first to expire of -
(a) the period of twelve months starting on the date on which the application was terminated; or
(b) the period of two months starting on the date on which the removal of the cause of non-compliance occurred.(3) The request shall be made on Patents Form 14/77 supported by evidence of the statements made in it.
(4) Where the comptroller is required to publish a notice under section 20A(5), it shall be published in the Journal.
(5) Where, upon consideration of the evidence provided in accordance with paragraph (3), the comptroller is not satisfied that a case for an order under section 20A has been made out, he shall notify the applicant accordingly.
(6) Where the comptroller has notified the applicant under paragraph (5), the applicant may, before the end of the period of one month starting on the date of the notification, request to be heard by the comptroller.
(7) Where the applicant requests a hearing under paragraph (6), the comptroller shall give the applicant an opportunity to be heard, after which he shall determine whether the request under section 20A shall be allowed or refused.
(8) Where the comptroller reinstates the application after a notice was published under paragraph (4), he shall advertise in the Journal the fact that he has reinstated the application.
(9) In determining the date on which the removal of the cause of non-compliance occurred, the comptroller shall have regard to any relevant principles applicable under the European Patent Convention.
Observations on patentability under section 21
37.-(1) Subject to paragraph (2) below, the comptroller shall send to the applicant a copy of-
(a) any document containing observations which he receives under section 21 in connection with the application; and
(b) any document referred to in any such observations being a document which he receives from the person making them.(2) Nothing in paragraph (1) above shall impose any duty on the comptroller in relation to any document-
(a) a copy of which it appears to the comptroller is readily available for retention by the applicant; or
(b) which in his opinion is not suitable for photocopying, whether on account of size or for any other reason.(3) If the period ascertained under rule 34 (as altered, if that be the case, under rule 100 or rule 110) has not expired and the comptroller has not sent to the applicant notice in accordance with section 18(4) that the application complies with the requirements of the Act and these Rules, the observations shall be referred to the examiner conducting a substantive examination of the application under section 18; and the examiner shall consider and comment upon them as he thinks fit in his report under that section.
GRANT, AMENDMENT AND CONTINUATION OF PATENT
Certificates of grant
38. A certificate that a patent has been granted shall be in a form which includes the name of the proprietor of the patent and the date of filing of the application.
Renewal of patents: general
39. -(1) In this rule and in rules 39A to 39C-
"prescribed period" means the period prescribed by rule 39A or 39B for the payment of a renewal fee;
"renewal date" has the meaning given in rules 39A(2) to (4) and 39B(3);
"renewal fee" means the fee prescribed in respect of a renewal date[9].
(2) If the renewal fee is not paid by the end of the prescribed period, the patent shall cease to have effect at the end of the renewal date.
(3) Subject to paragraph (4), Patents Form 12/77 must be filed within the prescribed period.
(4) Where payment is made pursuant to section 25(4)[10], Patents Form 12/77 must accompany the renewal fee and the prescribed additional fee.
(5) On receipt of the renewal fee the comptroller shall issue a certificate of payment.
Renewal of patents: first renewal
39A. -(1) This rule prescribes the period for the payment of a renewal fee in respect of the first renewal date.
(2) Subject to paragraphs (3) and (4)-
(a) the first renewal date is the fourth anniversary of the date of filing; and
(b) the prescribed period is the period of three months ending with the last day of the month in which that renewal date falls.(3) Where a patent is granted under the Act in the period of three months ending with the fourth anniversary of the date of filing, or at any time after that anniversary-
(a) the first renewal date is the last day of the period of three months beginning with the date on which the patent was granted; and
(b) the prescribed period begins with the date on which the patent was granted and ends with the last day of the month in which that renewal date falls.(4) Where the grant of a patent is mentioned in the European Patent Bulletin in the period of three months ending with the fourth anniversary of the date of filing, or at any time after that anniversary-
(a) the first renewal date is the later of-
(i) the last day of the period of three months beginning with the date on which the grant of the patent was mentioned in the European Patent Bulletin (case A); or
(ii) the next anniversary of the date of filing to fall after the date on which the grant of the patent was so mentioned (case B); and(b) the prescribed period is-
(i) in case A, the period beginning with the date on which the grant of the patent was mentioned in the European Patent Bulletin and ending with the last day of the month in which the first renewal date falls; or
(ii) in case B, the period of three months ending with the last day of the month in which the first renewal date falls.Renewal of patents: subsequent renewals
39B. -(1) This rule prescribes the period for the payment of a renewal fee in respect of renewal dates subsequent to the first renewal date.
(2) The prescribed period is the period of three months ending with the last day of the month in which the renewal date falls.
(3) For those purposes-
(a) the second renewal date is the next anniversary of the date of filing to fall after the first renewal date; and
(b) each subsequent renewal date is the anniversary of the previous renewal date.Renewal notice
39C. -(1) This rule applies where the renewal fee has not been received by the end of the prescribed period.
(2) The comptroller shall, within the period of six weeks immediately following the end of the prescribed period, and if the fee remains unpaid, send a renewal notice to the proprietor of the patent.
(3) The comptroller shall send the renewal notice to-
(a) the address specified by the proprietor on payment of the last renewal fee (or to another address that has since been notified to him for that purpose by the proprietor); or
(b) where such an address has not been so specified or notified, the address for service entered in the register.(4) The renewal notice shall remind the proprietor of the patent-
(a) that payment is overdue; and
(b) of the consequences of non-payment.Amendment of specification after grant
40.-(1)An application to the comptroller for leave to amend the specification of a patent shall -
(a) be made on Patents Form 11/77, and
(b) clearly identify the proposed amendment and state the reasons for it.(1A) If it is reasonably possible, the proposed amendment and the reasons for it shall also be set out and delivered to the comptroller in electronic form or using electronic communications.
(1B) The comptroller shall advertise in the Journal notice that an application has been made to amend the specification of a patent, and the advertisement shall state that any person may apply to the comptroller for a copy of the proposed amendment and the reasons given for it.
(2) At any time within two months from the date of the advertisement in the Journal, any person may give notice to the comptroller of opposition to the application to amend on Patents Form 15/77.
(3) Such notice shall be accompanied by a copy thereof and be supported by a statement in duplicate setting out fully the facts upon which the opponent relies and the relief which he seeks. The comptroller shall send a copy of the notice and of the statement to the applicant.
(4) Within the period of six weeks beginning on the date when such copies are sent to him, the applicant shall, if he wishes to continue with the application, file a counter-statement in duplicate setting out fully the grounds upon which the opposition is resisted; and the comptroller shall send a copy of the counter-statement to the opponent.
(5) The comptroller may give such directions as he may think fit with regard to the subsequent procedure.
(6) An application under this rule shall be accompanied by-
(a) if the specification as published is not in English, a document containing a translation into English of the part of the specification proposed to be amended and a translation into English of the part as proposed to be amended; and
(b) in the case of an application for amendment of a European patent (UK), a copy of the specification for that patent as published,and, if the specification as published is not in English, the applicant shall, if the comptroller so requests, supply a translation thereof into English.
(7) The comptroller may, if he thinks fit, require that the amendment be shown on a copy of the specification of which amendment is sought.
(8) Where leave to amend a specification is given, the applicant shall, if the comptroller so requires, and within a time to be fixed by him, file a new specification as amended, which shall be prepared in accordance with rules 16,18 and 20.
Restoration of lapsed patents under section 28
41.-(1) An application under section 28 for the restoration of a patent-
(a) may be made at any time during the period ending with the thirteenth month after the end of the period specified in section 25(4); and
(b) shall be made on Patents Form 16/77 supported by evidence of the statements made in it;and the comptroller shall publish in the Journal notice of the making of the application.
(2) If, upon consideration of the evidence, the comptroller is not satisfied that a case for an order under section 28 has been made out, he shall notify the applicant accordingly and, unless within one month the applicant requests to be heard in the matter, the comptroller shall refuse the application.
(3) If the applicant requests a hearing within the time allowed, the comptroller shall, after giving the applicant an opportunity of being heard, determine whether the application shall be allowed or refused.
(4) If the comptroller decides to allow the application, he shall notify the applicant accordingly and require him, within two months after the notification is sent to him, to file Patents Form 53/77, together with Patents Form 12/77, duly completed, and the amount of any unpaid renewal fee, upon receipt of which the comptroller shall order the restoration of the patent and advertise the fact in the Journal .
Notification of lapsed patent
42. -(1) This rule applies where—
(a) a patent has ceased to have effect because a renewal fee has not been paid by the end of the period prescribed by rule 39A or 39B, and
(b) the renewal fee and the prescribed additional fee have not been paid by the end of the period specified in section 25 (4) ("the extended period").(2) The comptroller shall, within the period of six weeks immediately following the end of the extended period, send a notice to the proprietor of the patent—
(a) stating that the extended period has expired, and
(b) referring him to the provisions of section 28.(3) The comptroller shall send the notice to the address specified by rule 39C(3).
Surrender of patents
43.-(1) A notice of an offer by a proprietor of a patent under section 29 to surrender his patent shall be-
(a) given in writing accompanied by:
(i) a declaration that no action is pending before the court for infringement or for revocation of the patent; or
(ii) if an action before the court is pending full particulars of the action in writing;and
(b) advertised by the comptroller in the Journal.
(2) At any time within two months from the advertisement any person may give notice of
opposition to the surrender to the comptroller on Patents Form 15/77.
(3) Such notice shall be accompanied by a copy thereof and be supported by a statement in duplicate setting out fully the facts upon which the opponent relies and the relief which he seeks. The comptroller shall send a copy of the notice and of the statement to the proprietor of the patent.
(4) Within the period of six weeks beginning on the date when such copies are sent to him, the proprietor of the patent shall, if he wishes to continue with the surrender, file a counterstatement in duplicate setting out fully the grounds upon which the opposition is resisted; and the comptroller shall send a copy of the counter-statement to the opponent.
(5) The comptroller may give such directions as he may think fit with regard to the subsequent procedure.
REGISTRATION
Entries in the register
44.-(1) No entry shall be made in the register in respect of any application for a patent before the application has been published in accordance with section 16.
(2) Subject to paragraph (2A), upon such publication the comptroller shall cause to be entered in the register-
(a) the name and address of the applicant or applicants;
(b) the name and address of the person or persons stated by the applicant or applicants to be believed to be the inventor or inventors;
(c) the title of the invention;
(d) the date of filing and the file number of the application for the patent;
(e) the date of filing and the file number of any application declared for the purposes of section 5(2) or 127(4) and the country in or for which the application was made;
(f) the date on which the application was published; and
(g) the address for service of the applicant or applicants.(2A) Where a person's application under rule 15A(1)(a) or (b) has been accepted by the comptroller, the comptroller may omit from the register his name and address (or, as the case may be, his address) as that of the person believed to be the inventor.
(3) The comptroller shall also cause to be entered in the register-
(a) the date of filing of the request for substantive examination;
(b) the date on which the application is withdrawn, taken to be withdrawn, treated as having been withdrawn, refused or treated as having been refused;
(c) the date on which the patent is granted;
(d) the name and address of the person or persons to whom the patent is granted if different to the entries made in accordance with paragraph (2)(a) above;
(e) the address for service if different to the entry made in accordance with paragraph (2)(g) above; and
(f) notice of any transaction, instrument or event referred to in section 33(3).(4) The comptroller may at any time enter in the register such other particulars as he may think fit.
Alteration of name or address
45.-(1) A request by any person, upon the alteration of his name, for that alteration to be entered in the register or on any application or other document filed at the Patent Office shall be made on Patents Form 20/77.
(2) Where the comptroller has doubts about whether he should make the alteration to a name -
(a) he shall inform the person making the request of the reason for his doubts; and
(b) he may require that person to furnish proof in support of the request(3) A request by any person for the alteration or correction of his address or address for service entered in the register or on any application or other document filed at the Patent Office shall, if not made on a form filed under any provision of these Rules, be made in writing and shall identify any relevant application or patent.
(4) If the comptroller is satisfied that a request to alter a name or to alter or correct an address or address for service may be allowed, he shall cause the register, application or other document to be altered accordingly.
Registrations under section 33
46.-(1) An application to register, or to give notice to the comptroller of, any transaction, instrument or event to which section 33 applies shall be made on Patents Form 21/77.
(2) An application under paragraph (1) above shall-
(a) where it relates to an assignment or assignation referred to in section 33(3)(a) or (c), be signed by or on behalf of the parties thereto or the assignor only;
(b) where it relates to a mortgage or the granting of a licence or sub-licence or security referred to in section 33( 3)(b) or (c), be signed by or on behalf of the mortgagor or the -grantor of the licence or security, as the case may be;or be accompanied by documentation establishing the transaction, instrument or event.
(3) The comptroller may direct that such documentation as he may require in connection with the application shall be sent to him within such period as he may specify.
Request for correction of error
47.-(1) Without prejudice to rule 45(3), a request for the correction of an error in the register or in any document filed at the Patent Office in connection with registration shall be made on Patents Form 11/77; and the correction shall be clearly identified on a document annexed to the form or, if not, on the form itself.
(2) Where the comptroller has doubts about whether there is an error -
(a) he shall inform the person making the request of the reason for his doubts; and
(b) he may require that person to furnish a written explanation of the nature of the error or evidence in support of the request.(3) Where the comptroller is satisfied that an error has been made he shall make such correction as he may agree with the proprietor of the patent (or, as the case may be, the applicant).
Request as to payment of renewal fee
48. A request for information about the date of payment of any renewal fee shall be accompanied by the prescribed fee, if any, but a copy of an entry in or extract from the register shall be requested only in accordance with rule 52.
Inspection of register
49.-(1) The register or entries or reproductions of entries In it shall be made available for inspection by the public between the hours of 9 am and 5 pm on weekdays, other than Saturdays and days which are specified as excluded days for the purposes of section 120.
(2) A request to be allowed to inspect the register shall be accompanied by the prescribed fee, if any, but a copy of an entry in or extract from the register shall be requested only in accordance with rule 52.
Advertisements in relation to register
50. The comptroller may arrange for the publication and advertisement of such things done under the Act or these Rules in relation to the register as he may think fit.
Entries relating to sections 8(1), 12(1) and 37(1)
51. On the reference to the comptroller of a question under section 8( 1), 12(1) or 37(1), he shall, subject to rule 44( 1), cause an entry to be made in the register of the fact and of such other information relating to the reference as he may think fit.
Certificates and copies supplied by comptroller
52.-(1) Upon request made on Patents Form 23/77 and payment of the appropriate fee, but subject to paragraph (3) below, the comptroller shall supply-
(a) a certified copy or certified extract falling within section 32(11);
(b) a copy of an entry in or an extract from the register or a copy of or an extract from anything referred to in section 32(11)(b), certified by the impression of a rubber stamp;
(c) a certificate for the purposes of section 32( 10).(2) Upon request made on Patents Form 23/77 and payment of the prescribed fee, if any, but subject to paragraph (3) below, the comptroller shall supply an uncertified copy of an entry in or an uncertified extract from the register or an uncertified copy of or an uncertified extract from anything referred to in section 32(11)(b).
(3) The restrictions on making documents available for inspection contained in rule 93(4) shall apply equally to the supply by the comptroller under this rule of copies of or extracts from such documents or requests as are referred to in rule 93( 4); and nothing in this rule shall be construed as imposing upon the comptroller the duty of supplying copies of or extracts from any document or file of a description referred to in rule 93( 5).
Order or direction by court
53. Where any order or direction has been made or given by the court-
(a) transferring a patent or application or any right in or under it to any person;
(b) that an application should proceed in the name of any person;
(c) allowing the proprietor of a patent to amend the specification; or
(d) revoking a patent;the person in whose favour the order is made or the direction is given-
(i) shall send to the comptroller written notice thereof accompanied by an office copy of the order or direction; and
(ii) if the comptroller so requires and before a time fixed by him, shall file a specification as amended (prepared in accordance with rules 16,18 and 20),and thereupon the specification shall be amended or the register rectified or altered, as the case may require.
ENTITLEMENT TO PATENT
Reference of question to the comptroller under section 37(1)
54.-(1) A reference under section 37(1) shall be made on Patents Form 2/77 and shall be accompanied by a copy thereof and a statement in duplicate setting out fully the nature of the question, the facts upon which the person making the reference relies and the order which he is seeking.
(2) The comptroller shall send a copy of the reference and statement to every person who is not a party to the reference being-
(a) a person who is shown on the register as having any right in or under the patent; or
(b) a person who is alleged in the reference to be entitled to a right in or under the patent.other than the person making the reference under section 37(1) or any person who has consented in writing to the reference.
(3) If any person who is sent a copy of the reference and statement under paragraph (2) above wishes to oppose the making of the order sought ("the opponent"), he shall, within the period of six weeks beginning on the date when such copies are sent to him, file in duplicate a counterstatement setting out fully the grounds of his opposition and the comptroller shall send a copy of the counter-statement to the person making the reference and to those recipients of the copy of the reference and statement who are not party to the counter-statement.
(4) The person making the reference or any such recipient may, within the period of six weeks beginning on the date when the copy of the counter-statement is sent to him, file evidence in support of his case and shall send a copy of the evidence,-
(a) in any case, to the opponent; and
(b) in the case of evidence filed by such a recipient, to the person making the reference.(5) Within the period of six weeks after the copy of such evidence is sent to him or, if no such evidence is filed, within six weeks of the expiration of the time within which it might have been filed, the opponent may file evidence in support of his case and shall send a copy of that evidence to the person making the reference and to those recipients; and within the period of six weeks after the copy of the opponent's evidence is sent to him, that person or any of those recipients may file further evidence confined to matters strictly in reply and shall send a copy of it to the persons mentioned in subparagraphs (a) and (b) of paragraph (4) above.
(6) No further evidence shall be filed by any party except by leave or direction of the comptroller.
(7) The comptroller may give such directions as he may think fit with regard to the subsequent procedure.
Applications under section 37(3)
55.-(1) An application under section 37(3) for authority to do anything on behalf of a person to whom directions have been given under section 37( 2)(d) shall be made on Patents Form 2/77 and shall be accompanied by a copy thereof and a statement in duplicate setting out fully the facts upon which the applicant relies and the nature of the authorisation sought.
(2) The comptroller shall send a copy of the application and statement to the person alleged to have failed to comply with the directions.
(3) The comptroller may give such directions as he may think fit with regard to the subsequent procedure.
Time limit for new application
56. Where the comptroller orders that a new application may be made under section 37( 4), it shall be made within three months calculated from the day on which the time for appealing from that order expires without an appeal being brought or, where an appeal is brought, from the day on which it is finally disposed of.
Orders under section 37
57.-(1) Where an order is made under section 37 -
(a) that a patent shall be transferred to one or more persons none of whom was an old proprietor; or
(b) that a person other than an old proprietor may make a new application for a patent,the comptroller shall give notice of the making of the order to the old proprietor or proprietors, and to any of their licensees of whom he is aware; and a person who makes a request under section 38(3) must do so before the end of the relevant period.
(2) The relevant period is -
(a) where the request is made by an old proprietor, the period of two months starting on the date the notice is sent to him;
(b) where the request is made by a licensee, the period of four months starting on the date the notice is sent to him.Reference to comptroller under section 38(5)
58.-(1) A reference under section 38(5) shall be made on Patents Form 2/77 and shall be accompanied by a copy and by a statement in duplicate setting out fully -
(a) the question referred;
(b) the facts upon which the person making the reference relies; and
(c) the period or terms of the licence which he is prepared to accept or grant.(2) The comptroller shall send, except to the person who made the reference, a copy of the reference and statement to -
(a) the new proprietor or proprietors or, as the case may be, the new applicant; and
(b) every person claiming to be entitled to be granted a licence,and any such person who receives a copy of the reference and statement may, before the end of the period of six weeks starting on the date the copies were sent to him, file a counter-statement (which must be in duplicate) setting out fully his grounds of objection.
(3) The comptroller shall send a copy of the counter-statement to the person who made the reference.
(4) The comptroller may give such directions as he thinks fit with regard to the subsequent procedure.
EMPLOYEES' INVENTIONS
Application under section 40 for compensation
59.-(1) An application to the comptroller under section 40 for an award of compensation shall be made on Patents Form 2/77 and shall be accompanied by a copy thereof and a statement in duplicate setting out fully the facts relied upon.
(2) The prescribed period for the purposes of section 40(1) and (2) shall, in relation to proceedings before the comptroller, be that period which begins when the relevant patent is granted and which expires one year after it has ceased to have effect:
Provided that, where a patent has ceased to have effect by reason of a failure to pay any renewal fee within the period prescribed for the payment thereof and an application for restoration is made to the comptroller under section 28, the said period shall,-
(a) if restoration is ordered, continue as if the patent had remained continuously in effect; or
(b) if restoration is refused, be treated as expiring one year after the patent ceased to have effect or six months after the refusal, whichever is the later.(3) The comptroller shall send a copy of the application and statement to the employer who, if he wishes to contest the application, shall within the period of six weeks beginning on the date when such copies are sent to him, file a counter-statement in duplicate setting out fully the grounds on which he disputes the employee's right to the award sought, and the comptroller shall send a copy of the counter-statement to the employee.
(4) The employee may, within the period of six weeks beginning on the date when the copy of the counter-statement is sent to him, file evidence in support of his case and shall send a copy of the evidence to the employer.
(5) Within the period of six weeks beginning on the date when the copy of the employee's evidence is sent to him or, if the employee does not file any evidence, within six weeks of the expiration of the time within which the employee's evidence might have been filed, the employer may file evidence in support of his case and shall send a copy of the evidence to the employee; and within the period of six weeks beginning on the date when the copy of the employer's evidence is sent to him, the employee may file evidence confined to matters strictly in reply and shall send a copy of that evidence to the employer.
(6) No further evidence shall be filed by either party except by leave or direction of the comptroller.
(7) The comptroller may give such directions as he may think fit with regard to the subsequent procedure.
Application under section 41(8) to vary etc awards of compensation
60.-(1) Where an award of compensation has been made to an employee under section 40(1) or (2) an application under section 41(8) to vary, discharge, suspend or revive any provision of the order shall be made on Patents Form 2/77 and shall be accompanied by a copy thereof and a statement in duplicate setting out fully the facts relied upon and the relief which is sought.
(2) Thereafter the provisions of rule 59( 3) to (7) shall apply to an application made under section 41(8) by an employee as they apply to an application referred to in that rule and to an application made under section 41(8) by an employer as if references in those paragraphs to the employee were references to the employer and references to the employer were references to the employee.
LICENCES OF RIGHT
Application under section 46(1) for entry in the register
61.-(1) An application under section 46(1) shall be made on Patents Form 28/77
(2) Every entry made in the register consequent upon such an application shall be published in the Journal.
Application under section 46(3) to settle licences of right
62.-(1) An application under section 46(3)(a) or (b) shall be made on Patents Form 2/77
which shall be filed in duplicate together with,-
(a) in the case of an application under section 46(3)(a) by the proprietor of the patent, two copies of a draft of the licence he proposes and of a statement of the facts he relies on; or
(b) in the case of an application under section 46( 3)(a) by any other person, two copies of a draft of the licence he seeks; and
(c) where that other person is also an applicant for an order under section 46(3)(b) for the exchange of a licence, two copies of the licence sought to be exchanged.(2) The comptroller shall,-
(a) in the case of an application by the proprietor, send a copy of Patents Form 2/77 and a copy of the documents filed under subparagraph (a) of paragraph (1) above to the person to whom the proprietor proposes to grant the licence; and
(b) in the case of an application by any other person, send a copy of Patents Form 2/77 and a copy of any documents filed under sub-paragraphs (b) or (c) of that paragraph to the proprietor.(3) Within the period of six weeks beginning on the date when the documents are sent to him under paragraph (2) above,-
(a) in the case of an application by the proprietor, the person referred to in paragraph (2)(a) above may file a counter-statement setting out fully the grounds of his objection; and
(b) in the case of an application by any other person, the proprietor may file a statement setting out fully the grounds of his objection,and, if he does so, at the same time shall send a copy of the statement or counter-statement, as the case may be, to the other party.
(4) Within the period of six weeks beginning on the date when a statement under paragraph (3)(b) above is sent to him, the person therein referred to may file a counterstatement; and, if he does so, he shall at the same time send a copy of the counter-statement to the proprietor.
(5) No further statement or counter-statement shall be served by either party without the leave or direction of the comptroller.
(6) The comptroller may give such directions as he may think fit with regard to the subsequent procedure.
Application by proprietor under section 47(1) for cancellation of entry
63. An application under section 47(1) shall be-
(a) made on Patents Form 30/77;
(b) accompanied by fees to the amount of the balance of all renewal fees which would have been payable if the entry had not been made; and
(c) advertised by the comptroller in the Journal.Application under section 47(3)
64.-(1) An application under section 47(3) shall be-
(a) made on Patents Form 2/77 within two months after the making of the relevant entry;
(b) accompanied by a copy of the application supported by a statement in duplicate setting out fully the nature of the claimant's interest and the facts upon which he relies; and
(c) advertised by the comptroller in the Journal.(2) The comptroller shall send a copy of the application and statement to the proprietor of the patent.
Opposition to cancellation of entry under section 47
65.-(1) Within two months of the date of the advertisement in the Journal of an application under rule 63(c) or 64 (1)(c), a person entitled to do so under section 47(6), may give notice to the comptroller of opposition to the application on Patents Form 15/77,
(2) The notice shall be accompanied by a copy thereof and be supported by a statement in duplicate setting out fully the facts upon which the opponent relies and the relief which he seeks.
(3) The comptroller shall send a copy of the notice and statement to the applicant for cancellation of the entry who, if he desires to proceed with the application, shall, within the period of two months beginning on the date when such copies are sent to him, file a counterstatement in duplicate setting out fully the grounds on which the opposition is contested and the comptroller shall send a copy of the counter-statement to the opponent.
(4) The comptroller may give such directions as he may think fit with regard to the subsequent procedure.
Procedure after cancellation of entry pursuant to section 47(3)
66. Where the comptroller cancels an entry in the register pursuant to section 47( 3), he shall inform the proprietor of the patent who shall, within such period as the comptroller specifies, pay fees to the amount of the balance of all renewal fees which would have been payable if the entry had not been made.
Declaration under paragraph 4A of Schedule 1 to the Act
67.-(1) A declaration under paragraph 4A of Schedule 1 to the Act shall be made on Patents Form 58/77.
(2) The comptroller shall cause to be entered in the register notice of any declaration filed under the said paragraph 4A and the entry in the register shall be published in the Journal.
COMPULSORY LICENCES
Application for compulsory licence under section 48(1), or revocation or cancellation under section 52(2)(a)
68. An application under section 48(1) or 52(2)(a) shall be made on Patents Form 2/77 and shall be accompanied by a statement in duplicate of the facts upon which the applicant relies and evidence in duplicate verifying the statement.
Application by Minister under section 51
69. An application under section 51(1)for an order or entry under section 51( 3)shall be made on Patents Form 2/77 and shall be accompanied by a statement in duplicate of the facts upon which the applicant relies and evidence in duplicate verifying the statement.
Procedure on receipt of application under section 48, 51 or 52
70. - (1) If upon consideration of the evidence submitted under rule 68 (application for: compulsory licence under section 48(1) or revocation or cancellation under section 52 (2)(a)) or rule 69 (application by Minister under section 51 ), the comptroller is not satisfied that a prima facie case is made out for-
(a) the making of an order or an entry, or
(b) the revocation of an order or cancellation of an entry,as the case may be, he shall notify the applicant accordingly, and unless, within one month of making such notification, the applicant requests to be heard in the matter, the comptroller shall refuse the application.
(2) Where the applicant requests a hearing within the time allowed, the comptroller, after giving the applicant the opportunity of being heard, shall determine whether the application may proceed or whether it shall be refused.
(3) If upon consideration of the evidence the comptroller is satisfied that a prima facie case has been made out for-
(a) the making of an order or an entry, or
(b) the revocation of an order or cancellation of an entry,as the case may be, or if, after hearing the applicant, he so determines, he shall direct that the application shall be advertised in the Journal, and shall send a copy of the application, the statement and the evidence filed in support thereof-
(c) where the application is under subparagraph (a), to the proprietor of the patent and to any other person shown on the register as having any right in or under the patent; or
(d) where the application is under subparagraph (b), to any person shown on the register as having any right in or under the patent.Opposition under section 52
71. - (1) Within two months of the date of the advertisement in the Journal of an application under rule 70(3), any person may give notice to the comptroller of opposition under section 52(1) or 52(2)(b), as the case may be, to the application on Patents Form 15/77.
(2) The notice shall be accompanied by a copy thereof and be supported by a statement in duplicate setting out fully the facts upon which the opponent relies, and the relief which he seeks, and evidence in duplicate verifying the statement.
(3) The comptroller shall send a copy of the notice, the statement and the evidence to the applicant who, if he desires to proceed with his application, shall within the period of six weeks beginning on the date when such copies are sent to him, file evidence in duplicate confined to matters strictly in reply and the comptroller shall send a copy thereof to the opponent.
(4) No further evidence shall be filed by either party except by leave or direction of the comptroller.
(5) The comptroller may give such directions as he may think fit with regard to the subsequent procedure.
INFRINGEMENT PROCEEDINGS BEFORE COMPTROLLER
Procedure on reference to comptroller under section 61(3)
72.-(1) A reference to the comptroller under section 61(3) shall be made by the parties to it on Patents Form 2/77, accompanied by a Joint statement giving full particulars of the matters which are in dispute and of those on which they are in agreement, and the capacity in which each is a party to the reference.
(2) The procedure set out in paragraphs (3) to (9) of this rule shall apply unless the only matter stated in the reference to be in dispute is the validity of any patent or part of a patent.
(3) The party to the dispute who is the proprietor of the patent or an exclusive licensee of the patent (such party being referred to in this and the next following rule as the claimant) shall within 14 days of making the reference file a statement in duplicate giving full particulars of his case on the matters in dispute and the relief which he seeks.
(4) The comptroller shall send a copy of the claimant's statement to the other party to the dispute (referred to in this and the next following rule as the defendant), who shall, within the period of six weeks beginning on the date when such copy is sent to him, file a counter- statement in duplicate setting out fully the grounds on which he contests the claimant's case and the comptroller shall send a copy of the counter-statement to the claimant.
(5) If the defendant alleges in his counter-statement that the patent or any part of it alleged by the claimant to have been infringed is not valid, the claimant shall, within the period of six weeks beginning on the date when the counter-statement is sent to him, file a further statement in duplicate setting out fully the grounds on which he contests the defendant's allegation; and the comptroller shall send a copy of the further statement to the defendant.
(6) Subject to such directions as the comptroller may give, the claimant may, within the period of six weeks beginning on the date when the counter-statement is sent to him, or, if he has filed a further statement under paragraph (5) above, within the period of six weeks thereof, file evidence in support of his case and shall send a copy thereof direct to the defendant.
(7) Within the period of six weeks beginning on the date when the copy of the claimant's evidence is sent to him or, if the claimant does not file any evidence, within six weeks of the evidence expiration of the time within which such evidence might have been filed, the defendant may file evidence in support of his case and shall send a copy of it to the claimant, and, within the period of six weeks beginning on the date when the copy of the defendant's evidence is sent to him, the claimant may file further evidence confined to matters strictly in reply and shall send a copy of it direct to the defendant.
(8) No further evidence shall be filed by either party except by leave or direction of the comptroller.
(9) The comptroller may give such directions as he may think fit with regard to the subsequent procedure.
Procedure where validity of patent in dispute
73.-(1) Where the only matter stated in the reference made under section 61( 3) to be in dispute is the validity of any patent or part of a patent the procedure set out in paragraphs (2) to (7) of this rule shall apply.
(2) The defendant shall, within 14 days of making the reference, file a statement in duplicate giving full particulars of the grounds on which he alleges that the patent or part of the patent is invalid and the relief which he seeks.
(3) The comptroller shall send a copy of the defendant's statement to the claimant, who shall, within the period of six weeks beginning on the date when the copy is sent to him, file a counter-statement in duplicate giving full particulars of the grounds on which he contests the defendant's allegations, and the comptroller shall send a copy of it to the defendant.
(4) Subject to such directions as the comptroller may think fit to give, the defendant may, within the period of six weeks beginning on the date when the copy of the claimant's counterstatement is sent to him, file evidence in support of his case, and shall send a copy of it to the claimant.
(5) Within the period of six weeks beginning on the date when the copy of the defendant's evidence is sent to him or, if the defendant does not file any evidence within six weeks of the expiration of the time within which such evidence might have been filed, the claimant may file evidence in support of his case and shall send a copy of it to the defendant; and, within the period of six weeks beginning on the date when the copy of the claimant's evidence is sent to him, the defendant may file further evidence confined to matters strictly in reply and shall send a copy of it to the claimant.
(6) No further evidence shall be filed by either party except by leave or direction of the comptroller.
(7) The comptroller may give such directions as he may think fit with regard to the subsequent procedure.
Procedure on application under section 71
74.-(1) An application to the comptroller under section 71 for a declaration that an act does not, or a proposed act would not, constitute an infringement of a patent shall be made on Patents Form 2/77 and shall be accompanied by a copy thereof and a statement in duplicate, setting out fully the facts upon which the applicant relies as showing that subparagraphs (a) and (b) of section 71(1) have been complied with and the relief which he seeks.
(2) The comptroller shall send a copy of the statement to the proprietor of the patent who shall, if he wishes to contest the application, within the period of six weeks beginning on the date when the copy is sent to him, file a counter-statement in duplicate setting out fully the ground on which he contests the applicant's case; and the comptroller shall send a copy thereof to the applicant.
(3) Subject to such directions as the comptroller may think fit to give, the applicant may, within the period of six weeks beginning on the date when the copy of the counter-statement is sent to him, file evidence in support of his application and shall send a copy thereof to the proprietor of the patent.
(4) Within the period of six weeks beginning on the date when the copy of the applicant's evidence is sent to him or, if the applicant does not file any evidence, within six weeks of the expiration of the time within which such evidence might have been filed, the proprietor of the patent may file evidence in support of his case and shall send a copy of that evidence to the applicant; and, within the period of six weeks beginning on the date when the copy of the proprietor's evidence is sent to him, the applicant may file further evidence confined to matters strictly in reply and shall send a copy of it to the proprietor.
(5) No further evidence shall be filed by either party except by leave or direction of the comptroller.
(6) The comptroller may give such directions as he may think fit with regard to the subsequent procedure.
REVOCATION OF PATENTS
Procedure on application for revocation under section 72
75.-(1) An application to the comptroller for the revocation of a patent shall be made on Patents Form 2/77 and shall be accompanied by a copy thereof and a statement in duplicate setting out fully the grounds of revocation, the facts upon which the applicant relies and the relief which he seeks.
(2) The comptroller shall send a copy of the application and statement to the proprietor of the patent.
(3) Within the period of six weeks beginning on the date when such copies are sent to him, the proprietor of the patent shall, if he wishes to contest the application, file a counter-statement in duplicate setting out fully the grounds upon which the application is contested; and the comptroller shall send a copy of the counter-statement to the applicant.
(4) The applicant may, within the period of six weeks beginning on the date when the copy of the counter-statement is sent to him, file evidence in support of his case and shall send a copy of the evidence to the proprietor.
(5) Within the period of six weeks beginning on the date when the copy of the applicant's evidence is sent to him or, if the applicant does not file any evidence, within six weeks of the expiration of the time within which such evidence might have been filed, the proprietor of the patent may file evidence in support of his case and shall send a copy of that evidence to the applicant; and, within the period of six weeks beginning on the date when the copy of the proprietor's evidence is sent to him, the applicant may file further evidence confined to matters strictly in reply and shall send a copy of it to the proprietor.
(6) No further evidence shall be filed by either party except by leave or direction of the comptroller.
(7) The comptroller may give such directions as he may think fit with regard to the subsequent procedure.
(8) Where an applicant is one of the proprietors of the patent, any reference in this rule to the proprietor of the patent shall be construed as a reference to those other proprietors who do not make the application.
(9) Where the proprietor of the patent makes (or, where there is more than one proprietor, all the proprietors make) an application for revocation of a patent-
(a) paragraphs (2) to (8) do not apply; and
(b) the comptroller shall give such directions as he may think fit with regard to the procedure for determining the application.Award of costs
76. If, in proceedings before the comptroller under section 72, the proprietor of a patent offers to surrender it under section 29, the comptroller shall, in deciding whether costs should be awarded to the applicant for revocation, consider whether proceedings might have been avoided if the applicant had given reasonable notice to the proprietor before the application was filed.
Revocation and amendment of patents under section 73
77.-(1) The opportunity to be given by the comptroller under subsection (1) or (2) of section 73 to the proprietor of a patent to make observations and to amend the specification of the patent shall be given by the comptroller sending to the proprietor notice informing him that he may make the observations and amend the specification and that, if he wishes to do so, he must do so within three months after the notice is sent to him.
(2) Where the comptroller gives leave under section 73 for the specification of the patent to be amended, he may, before the specification is amended, require the applicant to file a new specification as amended, prepared in accordance with rules16,18 and 20.
Opinions by Patent Office
Interpretation
77A. In rules 77B to 77K, unless the context otherwise requires—
"request" means a request for an opinion under section 74A;
"requester" means the person who makes that request;
"patent" means the patent to which that request relates;
"patent holder" means the proprietor of that patent and any exclusive licensee of the patent;
"proceedings" means proceedings (whether pending or concluded) before the comptroller, the court or the European Patent Office.
Request for an opinion under section 74A
77B. -(1) A request shall be made on Patents Form 17/77 and shall be accompanied by a copy and a statement setting out fully-
(a) the question upon which an opinion is sought;
(b) the requester's submissions on that question; and
(c) any matters of fact which are requested to be taken into account.(2) The statement shall be accompanied by-
(a) the name and address of any persons, of whom the requester is aware, having an interest in that question; and
(b) particulars of any proceedings of which the requester is aware which relate to the patent and which may be relevant to that question.(3) However, where the requester is acting as an agent in making the request, the persons referred to in paragraph (2)(a) do not include the person for whom the requester is so acting.
(4) The statement shall be accompanied by a copy of any evidence or other document (except a published United Kingdom specification or application) which is referred to in the statement.
(5) Each such statement, evidence or other document must be provided in duplicate.
Entry in the register
77C. The comptroller shall cause to be entered in the register—
(a) a notice that a request under section 74A(1)(a) or (b) has been received;
(b) a notice that a request has been refused or withdrawn;
(c) a notice that an opinion has been issued; and
(d) such other particulars concerning opinions or requests as he may think fit.Refusal or withdrawal of request
77D. —(1) The comptroller shall not issue an opinion if—
(a) the request appears to him to be frivolous or vexatious; or
(b) the question upon which the opinion is sought appears to him to have been sufficiently considered in any proceedings.(2) The comptroller shall not issue an opinion if the requester gives him notice in writing that the request is withdrawn.
(3) If the comptroller intends at any time—
(a) to refuse the request because the condition in paragraph (1)(a) or (b) is satisfied; or
(b) to refuse the request because, in accordance with section 74A(3)(b), he considers it inappropriate in all the circumstances to issue an opinion,he shall notify the requester accordingly.
Notification and advertisement of request
77E. —(1) The comptroller shall notify the following persons of the request (except where the person concerned is the requester)—
(a) the patent holder;
(b) any holder of a licence or sub-licence under the patent which has been registered under rule 46;
(c) any person who has made a request in respect of the patent under rule 92(1)(ff)[14]; and
(d) any person who is specified under rule 77B(2)(a).(2) In addition, the comptroller may notify of the request any persons who appear to him to be likely to have an interest in the question upon which the opinion is sought.
(3) The comptroller shall send a copy of the form and statement filed under rule 77B(1) to each person so notified, together with a copy of such other documents filed under rule 77B as he sees fit.
(4) The comptroller shall advertise a request in such manner as he may think fit.
(5) However, if the request is refused or withdrawn before a notification has been made under paragraph (1)—
(a) the patent holder alone shall be notified of the request (and of the fact that it has been refused or withdrawn); and
(b) paragraphs (3) and (4) do not apply.Submission of observations and observations in reply
77F. —(1) If the request has not been refused or withdrawn, any person may, before the end of the relevant period, file observations on any issue raised by the request.
(2) Such observations may include reasons why the comptroller should refuse the request.
(3) Any person who files observations under paragraph (1) shall ensure that, before the end of the relevant period, a copy of those observations is received—
(a) where that person is not the patent holder, by the patent holder; and
(b) by the requester.(4) A person to whom observations are sent under paragraph (3) may, not later than two weeks after the end of the relevant period, file observations confined strictly to matters in reply.
(5) Any person who files observations under paragraph (4) shall ensure that, within that period of two weeks, a copy of those observations is received—
(a) where that person is the requester, by the patent holder; and
(b) where that person is the patent holder, by the requester.(6) If it is reasonably possible, the observations filed under this rule and the copies of such observations shall be delivered only in electronic form or using electronic communications.
(7) For the purposes of this rule, the relevant period is the period of four weeks beginning with the date of advertisement under rule 77E(4).
Issue of the opinion
77G. —(1) After the end of the procedure under rule 77F, the comptroller shall refer the request to an examiner for the preparation of the opinion.
(2) The comptroller shall issue the opinion that has been prepared by sending a copy to—
(i) the requester;
(ii) the patent holder; and
(iii) any other person who filed observations under rule 77F(1).Review of opinion
77H. —(1) The patent holder may, before the end of the period of three months beginning with the date on which the opinion is issued, apply to the comptroller for a review of the opinion.
(2) However, such proceedings for a review may not be brought (or if brought may not be continued) if the issue raised by the review has been decided in other proceedings.
(3) The application shall be made on Patents Form 2/77, and shall be accompanied by a copy and a statement in duplicate setting out fully the grounds on which the review is sought.
(4) The statement shall contain particulars of any proceedings of which the applicant is aware which may be relevant to the question whether the proceedings for a review may be brought or continued.
(5) The application may be made on the following grounds only—
(a) that the opinion wrongly concluded that the patent was invalid, or was invalid to a limited extent; or
(b) that, by reason of its interpretation of the specification of the patent, the opinion wrongly concluded that a particular act did not or would not constitute an infringement of the patent.Procedure on review
77I. —(1) Upon receipt of the application, the comptroller shall send a copy of the form and statement filed under rule 77H—
(a) to the requester (if different from the applicant); and
(b) to all persons who filed observations under rule 77F.(2) The comptroller shall advertise the application in such manner as he may think fit.
(3) Before the end of the relevant period, any person may file a statement in support of the application or a counter-statement contesting it (which in either case must be in duplicate), and on so doing shall become a party to the proceedings.
(4) The relevant period is the later to end of the following periods—
(a) the period of four weeks beginning with the date that the application is advertised under paragraph (2);
(b) the period of two months beginning with the date on which the opinion is issued under rule 77G(2).(5) The comptroller shall send to the other parties a copy of each statement or counter-statement filed under paragraph (3).
(6) The comptroller may give such directions as he thinks fit with regard to the subsequent procedure.
Outcome of review
77J. —(1) Upon the completion of the proceedings under rule 77I the comptroller shall either—
(a) set aside the opinion in whole or in part; or
(b) decide that no reason has been shown for the opinion to be set aside.(2) A decision under paragraph (1)(a) or (b) shall not estop any party to proceedings from raising any issue regarding the validity or the infringement of the patent.
Appeals against a decision on review
77K. No appeal under section 97 shall lie from a decision to set aside the opinion under rule 77J(1)(a), except where the appeal relates to a part of the opinion that is not set aside.
AMENDMENT OF PATENTS IN INFRINGEMENT OR REVOCATION PROCEEDINGS
Amendment of patent under section 75
78.-(1) Where in any proceedings before the comptroller a proposed amendment to the specification of a patent made under section 75 is to be delivered to the comptroller it shall, if it is reasonably possible, be delivered to the comptroller in electronic form or using electronic communications.
(1A) If the comptroller requires it, notice that a proposal has been made to amend the specification of a patent shall be advertised in the Journal and the advertisement shall state that any person may apply to the comptroller for a copy of the proposed amendment.
(2) Within two months of the date of the advertisement in the Journal, any person may give the comptroller notice of opposition to the proposed amendment on Patents Form 15/77.
(3) Such notice shall be accompanied by a copy thereof and be supported by a statement in duplicate setting out fully the facts upon which the opponent relies and the relief which he seeks. The comptroller shall send a copy of the notice and statement to the proprietor of the patent and any other party to the proceedings before the comptroller.
(4) The comptroller may give such directions as he may think fit with regard to the subsequent procedure.
(5) Where the comptroller gives leave under section 75 for the specification of the patent to be amended, he may, before the specification is amended, require the applicant to file a new specification as amended, prepared in accordance with rules16,18 and 20.
EUROPEAN PATENTS AND PATENT APPLICATIONS AND NATIONAL PROCESSING OF INTERNATIONAL APPLICATIONS
Entries in the register
European patents and applications (UK): translations
80.- Schedule 4 shall have effect in cases where translations are required by the Act to be filed in connection with applications for, and with, European patents (UK).
Procedure for making request under section 81(2)(b)(i)
81.-(1) The request referred to in section 81(2)(b)(i) shall be made in writing within three months of the date on which the applicant is notified by the European Patent Office that his application for a European patent (UK) has been deemed to be withdrawn and shall be accompanied by the said notification and by the prescribed fee, if any.
(2) At the same time as making the request referred to in paragraph (1) above, the applicant may also request that a copy of the European patent application, together with a copy of the above request, be sent by the comptroller in accordance with relevant provisions of the European Patent Convention to the central industrial property office of any specified Contracting State designated in the application.
(3) Where a request has been made under section 81(2)(b)(i), the period prescribed for the purposes of sections 13(2), 15(10)(d) and 81(2)(c) shall be the period of two months starting on the date the comptroller received the request mentioned in paragraph (1).
(4) NO LONGER HAS EFFECT, PATENTS (AMENDMENT) RULES 2004
Procedure where section 81(2)(b)(ii) applies
82.-(1) Where section 81(2)(b)(11) applies, the period within which a request may be transmitted to the comptroller shall be the twenty months calculated from the declared priority date or, where there is no declared priority date, the date of filing of the application for the European patent (UK).
(2) Upon receipt of the request, the comptroller shall notify the applicant thereof.
(3) Where a request has been transmitted under section 81(2)(b)(ii), the period prescribed for the purposes of sections 13(2), 15(10)(d) and 81(2)(c) shall be the period of four months starting on the date of the notification under paragraph (2).
(4) NO LONGER HAS EFFECT, PATENTS (AMENDMENT) RULES 2004
Procedure for making request for substantive examination where section 81(2) applies
83.-(1) The period within which a request may be made to the comptroller for substantive examination of any application for a patent to which section 81( 2) applies shall be two years from the declared priority date or, where there is no declared priority date , the date of filing of the application for the European patent (UK).
(2) The request shall be made on Patents Form 10/77.
(3) The periods prescribed for the purposes of sections 18(4) and 20(1) by paragraphs (1)(a), (1A) (insofar as paragraph (1A) applies to paragraph (1)(a)) and (2) of rule 34 above shall also apply to an application for a European patent (UK) which is to be treated as an application for a patent under the Act , except that any reference to the date of filing of the application in paragraph (1)(a) of the said rule 34 shall be taken to refer to the date of filing of the application for the European patent (UK).
Recognition of determinations in proceedings before comptroller
84. Any person seeking recognition in proceedings before the comptroller of a determination by a competent authority of a relevant contracting state other than the United Kingdom of a question to which section 82 applies shall furnish the comptroller with a copy thereof certified as a true copy by an official of the said authority.
International applications for patents: sections 89 and 89A
85.-(1) Subject to the provisions of this rule, in relation to an international application for a patent (UK) which is, under section 89, to be treated as an application for a patent under the Act, the prescribed period for the purposes of section 89A (3) and (5) is thirty one months calculated from the date which, by virtue of section 89B(1)(b), is to be treated as the declared priority date or, where there is no declared priority date, the date of filing of the international application for a patent (UK).
(2) Where, in accordance with paragraph 1 of Schedule 2, the information specified in subparagraphs (2)(a)(ii) and (2)(a)(iii) of that paragraph is added to an international application for a patent (UK) after the international filing date, rule 113(1) shall not apply in respect of that information; and where the translation of the information, the filing of which is required to satisfy the relevant conditions of section 89A (3), has not been filed at the Patent Office before the end of the period referred to in paragraph (1) above,-
(a) the comptroller shall give notice to the applicant at the address furnished by the applicant in accordance with rule 30 requiring the applicant to file the translation within the period of three months commencing on the day on which the notice is sent; and
(b) the period referred to in paragraph (1) above shall be treated in respect of the translation as not expiring until the end of the period specified in the notice given under subparagraph (a) above.(3) In the case of an international application for a patent (UK),-
(a) rule 5(1) shall not apply if the applicant, on filing the application, states in writing to the receiving office that the invention has been displayed at an international exhibition;
(b) an applicant may comply with rule 5( 2) at any time before the end of the period of thirty two months after the declared priority date or, if there is no declared priority date, the date of filing of the international application for a patent (UK).
(3A) Where an international application for a patent (UK) has begun the national phase, a request may be made under section 5(2B) before the end of the period of 1 month beginning with the date the national phase of the application begins.
(4) Where the period referred to in paragraph (1) above has been extended under paragraph (5A) below, rule 100 or rule 110 so as to expire later than one month before the end of a period prescribed by paragraph (3) above or (7) below, paragraphs (3) above and (7) below shall have effect with the substitution for the period so prescribed of a period ending one month later than the period referred to in paragraph (1) above as so extended.
(5) For the purposes of section 89A (3) and (5), to the extent that the application and any amendment as published under the Patent Co-operation Treaty and an amendment annexed to the international preliminary examination report under Chapter II of the Treaty are not in English, a translation into English of the application as originally filed or, as the case may be, of the application as originally filed and of the amendment is necessary; however, the translation-
(a) shall exclude the request and abstract unless-
(i) the applicant expressly requests the comptroller to proceed earlier than the expiry of the period prescribed in paragraph (1) above; and
(ii) a copy of the application published by the International Bureau has not yet been sent to the Patent Office in accordance with the Treaty; and
(b) shall include any textual matter in the drawings in a form which complies with rule 49.5(d) of the Patent Co-operation Treaty; and,
(c) where a title has been established by the International Searching Authority under rule 37.2 of the Regulations under the Patent Cooperation Treaty which differs from the title included in the application as originally filed, shall include the former title in place of the latter; and
(d) may exclude any textual matter contained in a sequence listing forming part of the description if such textual matter complies with Rule 12.1(d) of the said Regulations and the description complies with Rule 5.2(b) of the said Regulations.(5A) Where an applicant is required to file a translation into English both of an application as originally filed and of the amendment to it, in accordance with paragraph (5) above, in order to satisfy the relevant conditions of section 89A(3) and (5) and at the expiry of the period referred to in paragraph (1) above the prescribed fee has been paid and one but not both of the necessary translations has been filed-
(a) the comptroller shall give notice to the applicant at the address furnished by the applicant in accordance with rule 30 requiring the applicant to file the required translation within the period of three month commencing on the day on which the notice is sent; and
(b) the period referred to in paragraph (1) above shall be treated in respect of that translation as not expiring until the end of the period specified in the notice given under sub-paragraph (a) above.(6) Payment of the fee prescribed under section 89A(6) shall be accompanied by a request in writing by the applicant for publication under that subsection.
(7) In the case of an international application for a patent (UK) in respect of which the conditions specified in section 89A(3)(a) are satisfied, the period prescribed for the purposes of sections 13(2), 15(10)(c) and (d) and 17(1) and 18(1) shall be the period which expires thirty three months after the declared priority date or, if there is no declared priority date , the date of filing of the international application for a patent (UK).
(7A) In the case of an international application for a patent (UK) in respect of which the conditions specified in section 89(A)(3)(b) are satisfied, the period prescribed-
(a) for the purposes of section 13( 2), shall be the period prescribed by rule15(1) or two months from the date on which the said conditions are satisfied, whichever expires the later;
(b) for the purposes of sections 15 (10)(c) and (d) and 17(1), shall be the period prescribed by rule 25(2) or two months from the date on which the said conditions are satisfied, whichever expires the later; and
(c) for the purposes of section 18( 1), shall be the period prescribed by paragraph (7) above.
(8) Where, in relation to an international application for a patent (UK), the applicant desires that section 89( 1) shall not cease to apply to the application by virtue of the operation of section 89(3), application in writing to that effect shall be made to the comptroller including a statement of the facts upon which the applicant relies, accompanied by the prescribed fee, if any.
(9) An international application for a patent (UK) shall not be treated as withdrawn under the Act if it, or the designation of the United Kingdom in it, is deemed to be withdrawn under the Patent Co-operation Treaty where, in the same or comparable circumstances in relation to an application under the Act (other than an international application)-
(a) the comptroller could have directed that an irregularity be rectified under rule 100, or could have granted a dispensation for the doing of any act or thing, or the production or filing of any document under rule 101, or could have granted an extension of time under rule 110, or could have extended the time or determined the times or periods under rule 111; and
(b) the comptroller determines that the application would not have been treated as withdrawn under the Act.(10) Where under section 89(3) an application is not to be treated as withdrawn and the applicant wishes to proceed-
(a) the comptroller may amend any document received by the Patent Office from the receiving office or the International Bureau and alter any period or time which is specified in the Act or these Rules upon such terms (including payment of any appropriate prescribed fee) as he may direct; and
(b) the fee prescribed under section 89A(3) shall not be payable.(11) Where the applicant satisfies the comptroller that,-
(a) because of an error made by the receiving office, an international application for a patent (UK) has been accorded a date of filing which is not correct; or
(b) the priority claim made under Article 8(1) of the Patent Co-operation Treaty has been considered not to have been made by the receiving office or the International Bureau because of an error made by the office or the Bureau,the comptroller may amend any document received by the Patent Office from the receiving office or the International Bureau or alter any period or time which is specified in the Act or these Rules as if the error were an error on the part of the Patent Office.
(12) Where-
(a) an international application for a patent (UK) purports to designate the United Kingdom; and
(b) the applicant alleges that he has been refused a filing date under the said Treaty on account of an error or omission in any institution having functions under the said Treaty,the applicant may apply in writing to the comptroller for the international application to be treated as an application under the Act by filing a statement of the facts upon which he relies accompanied by the prescribed fee, if any; and the comptroller may amend any document filed by the applicant and alter any period or time which is specified in the Act or these Rules upon such terms as he may direct.
(13) In this rule "receiving office" has the same meaning as in the Patent Co-operation Treaty.
Obtaining evidence for proceedings under European Patent Convention
86.-(1) An application to the comptroller under section 1 of the Evidence (Proceedings in Other Jurisdictions) Act 1975, as applied by section 92 of the Act, for an order for evidence to be obtained in the United Kingdom shall be made ex parte in writing and shall be accompanied by-
(a) an affidavit made by a person duly authorised in that behalf by the relevant convention court, evidencing that the request is made in pursuance of a request issued by or on behalf of that court and that the evidence to which the application relates is to be obtained for the purposes of civil proceedings before it; and
(b) the prescribed fee, if any.(2) After such an application as is mentioned in paragraph (1) above has been made, an ex parte application for a further order or directions in relation to the same matter may be made to the comptroller in writing.
(3) The comptroller may allow an officer of the European Patent Office to attend the hearing of such an application as is mentioned in paragraph (1) above and examine the witnesses or request the comptroller to put specified questions to them.
Communication of information to European Patent Office
87. The comptroller may authorise the communication to the European Patent Office or the competent authority of any country which is party to the European Patent Convention of such information in the files of the Patent Office as may be disclosed in accordance with section 118 and rule 93.
HEARINGS, AGENTS AND CORRECTION OF ERRORS
Comptroller's discretionary powers
88.-(1) Before exercising any discretionary power vested in him by or under the Act adversely to any party to a proceeding before him, the comptroller shall, unless he considers a different period is appropriate, give that party at least fourteen days' notice of the time when he may be heard.
(1A) At any stage of any proceedings before the comptroller, he may direct that the party or parties to the proceedings attend a case management conference at which he may give such directions as he may think fit with regard to the management of the proceedings. The comptroller shall give the party or parties at least fourteen days notice of the date of the case management conference.
(1B) Before hearing any party or parties that desire to be heard in any proceedings before him, the comptroller may direct that the party or parties attend a pre-hearing review at which he may give such directions as he may think fit with regard to the management of the hearing. The comptroller shall give the party or parties at least fourteen days notice of the date of the pre-hearing review.
(2) If, in any proceedings, a party desires to be heard, he shall give notice in writing to the comptroller, and the comptroller may refuse to hear any party who has not given such notice before the day appointed for the hearing.
(3) In any proceedings, any party who intends to refer at the hearing to any document (other than a report of a decision of any court or of the comptroller) not already mentioned in the proceedings shall, unless the comptroller consents and the other party agrees, give at least fourteen days' notice of his intention with details of, or a copy of, the document to the comptroller and the other party.
(4) After hearing the party or parties desiring to be heard or, if no party so desires, without a hearing, the comptroller shall decide the matter and shall notify all parties of his decision and, if any party so desires, shall give his reasons for the decision,
Admittance to hearings before comptroller
89.-(1) Subject to the following provisions of this rule, where a hearing before the comptroller of any dispute between two or more parties relating to any matter in connection with a patent or an application for a patent takes place after the publication of the application under section 16, the hearing of the dispute shall be in public.
(2) After consulting those parties to the dispute who appear in person or are represented at a hearing to which paragraph (1) above applies, the comptroller may direct that the hearing be not held in public, but without prejudice to paragraph (3) below.
(3) A member of the Council on Tribunals or of its Scottish Committee may, in his capacity as such, attend such a hearing or any other hearing before the comptroller under these Rules.
Security for costs or expenses
89A. -(1) The conditions prescribed for the purposes of making an order for security for costs under section 107(4) are that the party against whom the order is made-
(a) is resident outside the United Kingdom, but not resident in-
(i) a Brussels Contracting State,
(ii) a Lugano Contracting State, or
(iii) a Regulation State,
as defined in section 1(3) of the Civil Jurisdiction and Judgments Act 1982[17];(b) is a company or other body (whether incorporated inside or outside the United Kingdom) and there is reason to believe that it will be unable to pay another party's costs if ordered to do so;
(c) has changed his address for service with a view to evading the consequences of the litigation;
(d) has failed to furnish an address for service or furnished an incorrect address for service; or
(e) has taken steps in relation to his assets that would make it difficult to enforce an order for costs against him.(2) In relation to proceedings in Scotland, references in this rule to costs are to be construed as references to expenses.
Agents
90.-(1) Unless the comptroller otherwise directs in any particular case-
(a) all attendances upon him may be made by or through an agent; and
(b) every notice, application or other document filed under the Act may be signed by an agent.(2) Where after a person has become a party to proceedings before the comptroller he appoints-
(a) an agent for the first time, the newly appointed agent shall file Patents Form 51/77 on or before the first occasion when he acts as agent; or
(b) one agent in substitution for another, the newly appointed agent shall file in duplicate Patents Form 51/77 on or before the first occasion when he acts as agent and the comptroller shall send one copy of the form to the previously appointed agent.Correction of errors in patents and applications
91.-(1) Except where rule 45(3) or paragraph 4 of Schedule 4 has effect, a request for the correction of an error of translation or transcription or of a clerical error or mistake in any specification of a patent, in an application for a patent or in any document filed in connection with a patent or such an application shall be made on Patents Form 11/77 clearly identifying the proposed correction; and the comptroller may, if he thinks fit, require that the correction be shown on a copy of the document of which correction is sought.
(2) Where such a request relates to a specification, no correction shall be made therein unless the correction is obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as the correction.
(3) Where the comptroller requires notice of the proposed correction to be advertised, he shall advertise the request and the nature of the proposed correction in the Journal .
(3A) Where the comptroller is required to publish a notice under section 117(3), it shall be published in the Journal.
(4) At any time within two months after the date of the advertisement, any person may give notice to the comptroller of opposition to the request on Patents Form 15/77.
(5) Such notice shall be accompanied by a copy thereof and be supported by a statement in duplicate setting out fully the facts on which the opponent relies and the relief which he seeks.
(6) The comptroller shall send a copy of the notice and the statement to the person making the request who, if he desires to proceed with the request, shall within the period of two months beginning on the date when the copies are sent to him, file a counter-statement in duplicate setting out fully the grounds on which he contests the opposition and the comptroller shall send a copy of the counter-statement to the opponent.
(7) The comptroller may give such directions as he may think fit with regard to the subsequent procedure.
INFORMATION AND INSPECTION
Request for information under section 118
92.-(1) A request under section 118 for information relating to any patent or application for a patent may be made-
(a) as to when a request for substantive examination has been filed or the prescribed period for doing so has expired without the request having been filed;
(b) as to when the specification of a patent or application for a patent has been published;
(c) as to when an application for a patent has been withdrawn, has been taken to be withdrawn, has been treated as having been withdrawn, has been refused or has been treated as having been refused;
(d) as to when a renewal fee has not been paid within the period prescribed for the purposes of section 25(3);
(e) as to when a renewal fee has been paid within the period specified in section 25(4);
(f) as to when a patent has ceased to have effect and/or an application for restoration of a patent has been filed;
(ff) as to when an opinion has been requested under rule 77B;
(g) as to when an entry has been made in the register or an application has been made for the making of such entry;
(h) as to when any application or request is made or action taken involving an entry in the register or advertisement in the Journal, if the nature of the application, request or action is specified in the request; and
(i) as to when any document may be inspected in accordance with the provisions of rule 93 or 94.(2) As regards information relating to any existing patent or existing application for a patent, a request may also be made-
(a) as to when a complete specification following a provisional specification has been filed or when the period of fifteen months from the date of the application has expired and a complete specification has not been filed;
(b) as to when a complete specification is or will be published, or when an application for a patent has become void, and
(c) as to when a patent has been sealed or when the time for requesting sealing has expired.(3) Any such request shall be made on Patents Form 49/77 and a separate form shall be used in respect of each item of information required.
(4) In this rule, "existing patent" means a patent mentioned in section 127(2)(a) and (c) and "existing application" means an application mentioned in section 127(2)(b).
Inspection of documents under section 118
93.-(1) Subject to paragraph (5) below, and to the restrictions prescribed in paragraph (4) below, after the date of publication of an application for a patent in accordance with section 16, the comptroller shall, upon request and payment of the prescribed fee, if any, permit all documents filed or kept at the Patent Office in relation to the application or any patent granted in pursuance of it, to be inspected at the Patent Office.
(2) Subject to the same restrictions and to rule 96, where the circumstances specified in section 118 (4) or (5) exist, the comptroller shall, upon request and payment of the prescribed fee, if any, permit inspection of such documents before the publication in accordance with section 16.
(3) Where a declaration has been made in accordance with section 5(2) or 127(4), inspection of any application referred to therein and of any translation thereof shall be permitted upon request under paragraph (1) or (2) above without payment of any fee.
(4) The restrictions referred to in paragraph (1) above are-
(a) [Repealed by The Patents (Amendment) Rules 2007 (SI 2007 No. 677)];
(b) that documents prepared in the Patent Office solely for use therein shall not be open to inspection;
(c) that any document sent to the Patent Office, at its request or otherwise, for inspection and subsequent return to the sender, shall not be open to inspection;
(d) that no document filed at the Patent Office in connection with an application under section 40(1) or (2) or section 41(8) shall be open to inspection unless the comptroller otherwise directs;
(e) that no request made under rule 48,49(2), 52(2) or 92 or this rule shall be open to inspection;
(f) that documents in respect of which the comptroller issues directions under rule 94 that they are to be treated as confidential shall not be open to inspection, save as permitted in accordance with that rule;
(g) that any documents issued by the Patent Office which the comptroller considers should be treated as confidential shall not be open to inspection unless the comptroller otherwise directs; and
(h) that, where the comptroller has accepted a person's application under rule 15A(1)(a) or (b), no document from which his name and address can be identified as those of the inventor or of the person believed to be the inventor (or, as the case may be, from which his address can be so identified) shall be open to inspection unless the comptroller otherwise directs..
(5) Nothing in this rule shall be construed as imposing on the comptroller any duty of making available for public inspection-
(a) any document or any part of a document-
(i) which in his opinion disparages any person in a way likely to damage him; or
(ii) the publication or exploitation of which would in his opinion be generally
expected to encourage offensive, immoral or anti-social behaviour; or
(b) the file (but not the report) of the international preliminary examination of an international application under the Patent Co-operation Treaty; or
(c) any document filed with or sent to or by the Patent Office before 1st June 1978.(6) No appeal shall lie from a decision of the comptroller under paragraph (5)(a) above not to make a document or part of a document available for public inspection.
Confidential documents
94.-(1) A person filing at, or sending to, the Patent Office, a document other than a Patents Form or a document filed in connection with a request under section 74A, or any party to any proceedings to which the document relates, may, within fourteen days of the filing or sending of the document, request the comptroller (giving reasons for the request) to direct that the document or any part of it specified by him be treated as confidential, and the comptroller may, at his discretion, so direct; and while the request is being considered by the comptroller, that document or part thereof (hereinafter referred to as the relevant document) shall not be open to public inspection.
(2) Where such a direction has been given and not withdrawn, nothing in this rule shall be taken to authorise or require any person to be allowed to inspect the relevant document to which the direction relates except by leave of the comptroller.
(3) The comptroller shall not withdraw any direction given under this rule nor shall he give leave for any person to inspect any relevant document to which a direction which has not been withdrawn relates without prior consultation with the person at whose request the direction was given, unless the comptroller is satisfied that such prior consultation is not reasonably practicable.
(4) Where such a direction is given or withdrawn a record of the fact shall be filed with the relevant document to which it relates.
(5) [Repealed by The Patents (Amendment) Rules 2007 (SI 2007 No. 677)];
Bibliographic data for purposes of section 118(3)(b)
95. The following bibliographic data is prescribed for the purposes of section 118 (3)(b)-
(a) the number of the application;
(b) the date of filing of the application and, where a declaration has been made under section 5(2) or 127(4), the filing date, country and file number when available of each application referred to in that declaration;
(c) the name of the applicant or applicants;
(d) the title of the invention; and
(e) if the application has been withdrawn, has been taken to be withdrawn, has been treated as having been withdrawn, has been refused or is treated as having been refused, that fact.Request for information where section 118(4) applies
96.-(1) Where the circumstances specified in section 118(4) exist, a request under section 118(1) shall be accompanied by a statutory declaration verifying their existence and such documentary evidence (if any) supporting the request as the comptroller may require.
(2) The comptroller shall send a copy of the request, the declaration and the evidence (if any) to the applicant for the patent and shall not comply with the request until the expiry of fourteen days thereafter.
MISCELLANEOUS
Service by post
97. Any notice, application or other document sent to the Patent Office by posting it in the United Kingdom shall be deemed to have been given, made or filed at the time when the letter containing it would be delivered in the ordinary course of post.
Hours of business
98. NO LONGER HAS EFFECT, Patents Act 2004 (Commencement No. 1 and Consequential and Transitional Provisions) Order 2004
Excluded days
99. NO LONGER HAS EFFECT, Patents Act 2004 (Commencement No. 1 and Consequential and Transitional Provisions) Order 2004
Correction of irregularities
100 - (1) Subject to paragraph 2 below, any document filed in any proceedings before the comptroller may, if he thinks fit, be amended, and any irregularity in procedure in or before the Patent Office may be rectified, on such terms as he may direct.
(2) In the case of an irregularity or prospective irregularity -
( a) which consists of a failure to comply with any limitation as to times or periods specified in the Act or the 1949 Act or prescribed in these Rules or the Patents Rules 1968 as they continue to apply which has occurred, or appears to the comptroller is likely to occur in the absence of a direction under this rule;
(b) which is attributable wholly or in part to an error, default or omission on the part of the Patent Office; and
(c) which it appears to the comptroller should be rectified, the comptroller may direct that the time or period in question shall be altered but not otherwise.(3) Paragraph (2) above is without prejudice to the comptroller's power to extend any times or periods under rule 110 or 111.
Dispensation by comptroller
101 - Where, under these Rules, any person is required to do any act or thing, or any document or evidence is required to be produced or filed, and it is shown to the satisfaction of the comptroller that from any reasonable cause that person is unable to do that act or thing, or that that document or evidence cannot be produced or filed, the comptroller may, upon the production of such evidence and subject to such terms as he thinks fit, dispense with the doing of any such act or thing, or the production or filing of such document or evidence.
Remission of fees
102.-(1) The comptroller may remit the whole or part of a search fee in the following cases-
(a) where an international application for a patent (UK) which has already been the subject of a search by the International Searching Authority in accordance with the Patent Co-operation Treaty falls to be treated as an application for a patent under the Act; and
(b) where a new application is filed in accordance with section 15(9) for a patent for an invention in relation to which the applicant has previously paid the search fee in connection with the earlier application referred to in that subsection.(1A) The comptroller may remit the whole or part of the fee payable in respect of a request for an opinion under section 74A where he has refused the request.
(2) In cases falling within paragraph (1)(b) or (1A) above a request for remission of the whole or part of the fee shall be made in writing by the applicant to the comptroller.
(3) No appeal shall lie from any decision of the comptroller under this rule.
Evidence
103.-(1) Where under these Rules evidence may be filed, it shall be by statutory declaration, witness statement or affidavit.
(2) The comptroller may if he thinks fit in any particular case take oral evidence in lieu of or in addition to such evidence and shall allow any witness to be cross-examined on his affidavit, witness statement or declaration, unless he directs otherwise.
(3) In England and Wales, the comptroller shall, in relation to the giving of evidence (including evidence on oath), the attendance of witnesses and the discovery and production of documents, have all the powers of a judge of the High Court, other than the power to punish summarily for contempt of court.
(4) In Scotland, the comptroller shall, in relation to the giving of evidence (including. evidence on oath), have all the powers which a Lord Ordinary of the Court of Session has in an action before him, other than the power to punish summarily for contempt of court,. and, in relation to the attendance of witnesses and the recovery and production of documents, have all the powers of the Court of Session.
(5) The comptroller may give a direction as he thinks fit in any particular case that evidence shall be given by affidavit or statutory declaration instead of or in addition to a witness statement.
(6) Where in proceedings before the comptroller, a party adduces evidence of a statement made by a person otherwise than while giving oral evidence in the proceedings and does not call that person as a witness, the comptroller may, if he thinks fit, permit any other party to the proceedings to call that person as a witness and cross-examine him on the statement as if he had been called by the first-mentioned party and as if the statement were his evidence in chief.
Patent Office Evidence Practice NoteStatutory declarations and affidavits
104. Any statutory declaration or affidavit filed under the Act or these Rules shall be made and subscribed as follows,
(a) in the United Kingdom, before any Justice of the peace, or any commissioner or other officer authorised by law in any part of the United Kingdom to administer an oath for the purpose of any legal proceedings;
(b) in any other part of Her Majesty's dominions or in the Republic of Ireland, before any court, Judge, justice of the peace, or any officer authorised by law to administer an oath there for the purpose of any legal proceedings; and
(c) elsewhere, before a British Minister, or person exercising the functions of a British Minister, or a Consul, Vice-Consul, or other person exercising the functions of a British Consul, or before a notary public, judge or magistrate.Patent Office Evidence Practice Note
Witness Statements
104A. Any witness statement filed under these Rules shall -
(a) be a written statement signed and dated by a person which contains the evidence which the person signing it would be allowed to give orally; and
(b) include a statement by the intended witness that he believes the facts in it are true.
Patent Office Evidence Practice Note
Admission of documents
105. Any document purporting to have affixed, impressed or subscribed thereto or thereon the seal or signature of any person authorised by the last foregoing rule to take a declaration, in testimony that the declaration was made and subscribed before him, may be admitted by the comptroller without proof of the genuineness of the seal or signature or of the official character of the person or his authority to take the declaration.
Directions as to the furnishing of documents etc
106. At any stage of any proceedings before the comptroller he may direct that such documents, information or evidence as he may require shall be furnished within such period as he may fix.
Supporting statements or evidence
107.-(1) Where by virtue of any of the rules mentioned in paragraph (2) of this rule, any notice or application is required to be supported by a statement or evidence, such a statement or evidence shall be filed on. or within fourteen days after, the date on which the notice is given or the application is made.
(2) The rules referred to in paragraph (1) above are rules 36A, 40(3), 41(1), 43(3), 64(1)(b), 65(2), 71(2), 78(3) and 91(5).
Proceedings in Scotland
108.-(1) Where there is more than one party to the proceedings under section 8,12, 37 ,40(1) or (2), 41(8), 61(3), 71 or 72, or under rule 77H, any party thereto may request the comptroller to direct that the hearing or hearings, if any, in such proceedings shall be held in Scotland and-
(a) the comptroller shall so direct in the following cases-
(i) where one party resides in Scotland and all parties to the proceedings agree to the hearing or hearings, if any, being held there; or
(ii) where all the parties to the proceedings reside in Scotland and one of them requests the hearing or hearings, if any, to be held there and the comptroller is satisfied that it would not be unduly burdensome to any other party to hold the hearing or hearings there; and
(b) the comptroller may direct that the hearing or hearings, if any, be held in Scotland (even where none of the parties resides in Scotland) where one party to the proceedings requests it and he is satisfied that the balance of convenience is in favour of holding the hearing or hearings there.(2) A request under paragraph (1) above shall be made in duplicate and shall-
(a) be in writing;
(b) be accompanied by a statement of facts in duplicate setting out the grounds upon which the request is made; and
(c) be filed at any time before the comptroller issues notification to the parties that the hearing or hearings have been appointed, or, with the leave of the comptroller, within fourteen days thereafter.(3) The comptroller, upon a request being made under paragraph (1) above, shall send a copy of the request and the statement to any party to the proceedings who has not indicated that he consents to the request.
(4) Any party or parties to the proceedings having objection to a request made under paragraph (1) above may, within one month after notification of the request is sent to him, file at the Patent Office a counter-statement in duplicate setting out the grounds upon which objection is taken, and the comptroller shall send a copy of the counter-statement to any person who is not party to it.
(5) The comptroller may give such directions as he may think fit with regard to the subsequent procedure.
(6) No appeal shall lie from any decision of the comptroller under this rule.
Appointment of advisers
109. The comptroller may appoint an adviser to assist him in any proceeding before the comptroller and shall settle the question or instructions to be submitted or given to such adviser.
Alteration of time limits
110.-(1) The comptroller may, if he thinks fit, extend (or further extend) any period of time prescribed by these Rules except a period prescribed by the rules listed in Parts 1 and 3 of Schedule 4A.
(2) The comptroller may, if he thinks fit, shorten any period of time prescribed by the rules listed in Part 2 of Schedule 4A.
(3) The comptroller shall extend, by a period of two months, any period of time prescribed by the rules listed in Part 3 of Schedule 4A where -
(a) a request is filed on Patents Form 52/77;
(b) no previous request has been made under this paragraph;
(c) that request is filed before the end of the period of two months starting on the date the relevant period of time expired.(4) The comptroller may, if he thinks fit, extend (or further extend) any period of time prescribed by the rules listed in Part 3 of Schedule 4A where -
(a) a request is filed on Patents Form 52/77; and
(b) unless the comptroller otherwise directs, the person making the request has furnished evidence supporting the grounds of the request.(5) Where the request under paragraph (4) has been granted the comptroller shall notify the person who made the request accordingly.
(6) Where a person is notified under paragraph (5) that his request has been granted, he shall, before the end of the period of two months starting on the date of the notification, file Patents Form 53/77; otherwise the extension granted under paragraph (4) shall have no effect.
(7) A request under paragraph (3) or (4) for more than one period of time to be altered may only be made on single form where, if the request were granted, all the altered periods of time would expire on the same date.
(8) Any alteration made under paragraphs (1), (2) or (4) shall be made -
(a) after giving the parties such notice, and
(b) subject to such conditions,as the comptroller may direct, except that a period of time prescribed by the rules listed in Part 4 of Schedule 4A may only be extended (or further extended) for a period of two months.
(9) Subject to paragraph (10), an extension may be granted under paragraph (1) or (4) notwithstanding the period of time prescribed by the relevant rule has expired.
(10) No extension may be granted in relation to the periods of time prescribed by the rules listed in Part 4 of Schedule 4A after the expiry of the period of two months starting immediately after the period of time as prescribed (or previously extended) has expired.
(11) Where -
(a) the period within which any party to a dispute may file evidence under these Rules is to begin after the expiry of any period in which any other party may file evidence under these Rules; and
(b) that other party notifies the comptroller that he does not wish to file any, or any further, evidence,the comptroller may direct that the period within which the first party may file evidence shall begin on such date as may be specified in the direction and shall notify all parties to the dispute of that date.
Extension of time limits specified by comptroller
110A.-(1) A request made under section 117B(2) shall be -
(a) in writing; and
(b) made before the end of the period prescribed by paragraph (2).(2) The period prescribed for the purposes of section 117B(3) shall be the period of two months starting immediately after the expiry of the period to which section 117B(2) applies.
(3) A request made to the comptroller under section 117B(4)(b) to further extend a period shall be in writing.
Interrupted days
111.-(1) The comptroller may certify any day as an interrupted day where -
(a) there is an event or circumstance causing an interruption in the normal operation of the Patent Office; or
(b) there is a general interruption or subsequent dislocation in the postal services of the United Kingdom.
(2) The comptroller shall, where the time for doing anything under the Act or these Rules expires on an interrupted day, extend that time to the next following day not being an interrupted day (or an excluded day).
(3) Any certificate of the comptroller given under paragraph (1) shall be posted in the Patent Office and advertised in the Journal.
(4) In this rule -
“excluded day” means a day specified as an excluded day in directions given under section 120; and
“ interrupted day” means a day which has been certified as such under paragraph (1).
Delays in communication services
111A.-(1) The comptroller shall extend any period of time specified in the Act or these Rules where he is satisfied that a failure to do something under the Act or these Rules was wholly or mainly attributable to a delay in, or failure of, a communication service.
(2) Any extension under paragraph (1) shall be -
(a) made after giving the parties such notice, and
(b) subject to such conditions,
as the comptroller may direct.
(3) In this rule “communication service” means a service by which documents may be sent and delivered and includes post, facsimile, email and courier.
Copies of documents
112.-(1) Where a document, other than a published United Kingdom specification or application, is referred to in any reference, notice, statement, counter-statement, observations or evidence required by the Act or these Rules to be filed at the Patent Office or sent to the comptroller, copies of the document shall be furnished to the Patent Office within the same period as the reference, notice, statement, counter-statement, observations or evidence in which they are first referred to may be filed and in the following number-
(a) where the document in which they were so referred to had to be filed or sent in duplicate or the original document had to be accompanied by a copy thereof, in duplicate; and
(b) in all other cases, one:Provided that where a copy of any evidence or observations is required by the Act or these Rules to be sent direct to any person, a copy of any document referred to in that document shall also be sent direct to that person.
(2) A specification filed under rule 40(8), 53(ii), 77(2) or 78(5) shall be filed in duplicate.
Copies kept at the Patent Office
112A.-(1) This rule applies where an applicant is not required to file a copy of an application at the Patent Office because that application or a copy of that application is already kept at the Patent Office.
(2) Where this rule applies the comptroller shall make a copy (or further copy) of that application and certify it accordingly.
Translations
113.-(1) Subject to the provisions of rules 6 to 6C, 16, 22A, 40, 81, 82 and 85 and paragraph (3), where any document or part of a document which is in a language other than English is filed at the Patent Office or sent to the comptroller in pursuance of the Act or these Rules, it shall be accompanied by a translation into English of the document or that part.
(2) Where more than one copy of that document is required to be so filed or sent, a corresponding number of copies of the translation shall accompany it.
(3) Where any document which, or any part of which, is in a language other than English-
(a) is referred to in a search report drawn up under Article 18 of the Patent Co-operation Treaty; or
(b) is cited in the statement contained in an international preliminary examination report established under Article 35 of that Treaty,and any such report is filed at the Patent Office in relation to the provisions of section 89A, a translation into English of that document or part shall, if the comptroller so directs, be filed within two months of the date on which such direction is given.
(4) Where proceedings are instituted before the comptroller in relation to a European patent (UK) the specification of which was published in French or German, the party who institutes those proceedings shall furnish to the Patent Office a translation into English of the specification of the patent unless-
(a) such a translation has already been filed under section 77(6); or
(b) the comptroller determines that it is not necessary.(5) If, in the course of such proceedings, leave is given for the amendment of the specification of the European patent (UK), the party given leave to amend shall furnish to the Patent Office a translation of the amendment into the language in which the specification of the patent was published.
(5A) For the purposes of paragraph (4), the institution of proceedings before the comptroller includes the making of a request for an opinion under section 74A.
(6) NO LONGER HAS EFFECT, PATENTS (AMENDMENT) RULES 2004
Establishing the accuracy of translations
113A. If the comptroller has reasonable doubts about the accuracy of any translation of a document that has been filed at the Patent Office by any person in accordance with the Act or these Rules -
(a) he shall notify that person of the reasons for his doubts; and
(b) he may require that person to furnish evidence to establish that the translation is accurate,and where that person fails to furnish evidence the comptroller may, if he thinks fit, take no further action in relation to that document.
Publication and sale of documents
114.- The comptroller may arrange for the publication and sale of copies of specifications and other documents in the Patent Office and of indexes to, and abridgements or abstracts of, such documents.
The Journal
115.-(1) The comptroller shall publish a journal containing particulars of applications for patents and other proceedings under the Act and any other information he may deem to be generally useful or important.
(2) The comptroller shall publish in the Journal any directions he gives under section 120(1) or 123(2A).
Reports of cases
116.- The comptroller shall from time to time publish reports of-
(a) cases relating to patents, trade marks, registered designs and design right decided by him; and
(b) cases relating to patents (whether under the Act or otherwise), trade marks, registered designs, copyright and design right decided by any court or body (whether in the United Kingdom or elsewhere),being cases which he considers to be generally useful or important.
INTERNATIONAL APPLICATIONS
Filing of applications
117.-(1) Where the Patent Office is the competent receiving Office under the Patent Cooperation Treaty, an international application shall be filed at it in English in triplicate.
(2) If less than three copies of the international application are so filed, upon preparation by the Patent Office of the number of copies of it required to bring the total to three, the applicant shall on demand pay to the Patent Office the appropriate charge.
Transmittal and late payment fees
118.-(1) Subject to paragraph (3) below, payment of a prescribed transmittal fee referred to in rule 14.1 of the Regulations under the Patent Co-operation Treaty shall be made to the Patent Office as the competent receiving Office under the said Treaty.
(2) Where in accordance with Rule 19.4(a) of the said Regulations, an international application is considered to have been received by the Patent Office on behalf of the International Bureau as receiving Office, the transmittal of the application by the Patent Office shall be subject to the payment of a fee as provided by Rule 19.4(b) of the said Regulations.
(3) Where the Patent Office as the competent receiving Office under the said Treaty issues an invitation pursuant to rule 16 bis.1 (a) or rule 16 bis.1 (b) of the said Regulations, that invitation shall require the applicant to pay to the Patent Office a late payment fee as provided by Rule 16 bis.2 of the said Regulations.
Certified copies
119. A request under rule 17.1 or rule 20.9 of the said Regulations for a certified copy of an international application as filed with the Patent Office as receiving office and of any corrections thereto shall be made on Patents Form 23/77 and shall be accompanied by the appropriate fee.
Fees to be paid in sterling
120. All fees payable to the Patent Office under the said Treaty in respect of international applications shall be paid in sterling.
Transitional provisions and revocations
121.-(1) The reference to Schedule 2 to the Patents Rules 1968 in paragraph (a) of the proviso to rule 124 of the Patents Rules 1978 shall be construed as a reference to that Schedule with the substitution for forms, 7, 9, 14 to 21, 23, 32 to 36, 38, 39, 43, 44, 46, 53 to 55, 63 to 65 and 69 of the correspondingly numbered forms in Schedule 5.
(2) In rule 124 of the Patents Rules 1978-
(a) for the words "the Patents Rules 1982" in each place where they occur, there shall be substituted the words "the Patents Rules 1995";
(b) for paragraph (d) of the proviso to paragraph (1), there shall be substituted (d) subject to sub-rule (3) below, rules 30, 39(1) and (3) to (6), 41 to 50, 52, 61 to 66, 68 to 74, 76, 88(1), 90, 92 to 95, 97 to 101, 103 to 108, and 114 to 116 of the Patents Rules 1995 shall apply.",and
(c) for the words "in rule 39(1)" in paragraph (4) there shall be substituted the words "in rule 39(1) of the Patents Rules 1995".
(3) The rules described in column 1 of Schedule 6 are hereby revoked to the extent specified in column 3 thereof.
(4) Where.-
(a) immediately before these Rules come into force, any time or period prescribed by the Rules hereby revoked has effect in relation to any act or proceeding and has not expired; and
(b) the corresponding time or period prescribed by these Rules would have expired or would expire earlier,the time or period prescribed by those Rules and not by these Rules shall apply to that act or proceeding.
Richard Page
Minister for Small Business,
3rd August 1995 Department of Trade and Industry