The Patents Rules 2007
(as amended)
The Patents (Fees) Rules 2007
An unofficial consolidation produced by Patents Legal Section
4 October 2009
Intellectual Property Office is an operating name of the Patent Office
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Note to users
This is an unofficial consolidation of the Patents Rules 2007 (SI 2007 No. 3291), as amended up to and
including 6 April 2009, and the Patents (Fees) Rules 2007 (SI 2007 No. 3292), as amended up to and
including 4 October 2009.
The Patents Rules 2007 completely replace the Patents Rules 1995 (as amended) and the Patents
(Supplementary Protection Certificates) Rules 1997. A complete concordance between the old Rules
and the Patents Rules 2007 is available on the Office’s website at www.ipo.gov.uk/p-rules-
concordance.pdf
The Patents (Fees) Rules 2007 completely replace the Patents (Fees) Rules 1998 (as amended).
This unofficial consolidation includes the amendments to the Patents Rules 2007 made by:
- the Patents, Trade Marks and Designs (Address for Service) Rules 2009 (SI 2009 No. 546)
and the amendments to the Patents (Fees) Rules 2007 made by:
- the Trade Marks and Trade Marks and Patents (Fees) (Amendment) Rules 2009 (SI 2009 No. 2089)
While the greatest care has been taken in producing this unofficial text, the Office does not accept any
responsibility for errors or omissions, nor for any consequences of such errors or omissions.
Patents Legal Section
4 October 2009
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The Patents Rules 2007
(as amended)
An unofficial consolidation of the Patents Rules 2007 (SI 2007 No. 3291)
incorporating the amendments made by:
the Patents, Trade Marks and Designs (Address for Service) Rules 2009 (SI 2009 No. 546)
In the following list, rules which have been amended by SI 2009 No. 546 are marked *
CONTENTS
PART 1
INTRODUCTORY
1. Citation and commencement
2. General interpretation
3. The declared priority date
4. Forms and documents
PART 2
APPLICATIONS FOR PATENTS
International exhibitions
5. International exhibitions
Declarations of priority
6. Declaration of priority for the purposes of section 5(2) (priority date)
7. Request to the comptroller for permission to make a late declaration under section
5(2B)
8. Filing of priority documents to support a declaration under section 5(2)
9. Translation of priority documents
Mention of the inventor
10. Mention of the inventor
11. Waiving the right to be mentioned
Form and content of applications
12. Applications for the grant of patents under sections 14 and 15
13. Biological material and sequence listings
14. Size and presentation of application
15. The abstract
16. Single inventive concept
17. References under section 15(1)(c)(ii)
18. Missing parts
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New applications
19. New applications filed as mentioned in section 15(9)
20. New applications under sections 8(3), 12(6) and 37(4)
21. Extensions for new applications
Period for filing contents of application
22. Periods prescribed for the purposes of sections 15(10) and 17(1)
Preliminary examination
23. Preliminary examination under section 15A
24. Correcting a declaration made for the purposes of section 5(2)
25. Formal requirements
Publication of application
26. Publication of application
Search and substantive examination
27. Search under section 17
28. Request for substantive examination under section 18
29. Substantive examination reports
30. Period for putting application in order
31. Amendment of application before grant
32. Reinstatement of applications under section 20A
33. Observations by third parties on patentability
PART 3
GRANTED PATENTS
Certificate and amendment
34. Certificate of grant
35. Amendment of specification after grant
Renewal
36. Renewal of patents: general
37. Renewal of patents: first renewal
38. Renewal of patents: subsequent renewals
39. Renewal notice
40. Restoration of lapsed patents under section 28
41. Notification of lapsed patent
Surrender and cancelling entry that licences available as of right
42. Surrender
43. Application for, and cancellation of, an entry that licences are available as of right
PART 4
THE REGISTER AND OTHER INFORMATION
The register
44. Entries in the register
45. Advertisement in relation to register
46. Copies of entries in, or extracts from, the register and certified facts
47. Registrations of transactions, instruments and events
Copies of documents and corrections in relation to the register
48. Copies of documents
49. Correction of name, address and address for service
50. Request for correction of error
Requests for information or documents
51. Restrictions on inspection of documents
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52. Request for information where section 118(4) applies
53. Confidential documents
54. Requests for certain information
55. Bibliographic information about an unpublished application
PART 5
EUROPEAN PATENTS (UK)
Translations
56. Translations of European patents (UK)
57. Corrected translations
Conversion requests
58. Procedure for making a conversion request under section 81(2)(b)(i)
59. Procedure for making a conversion request under section 81(2)(b)(ii)
60. Request for substantive examination following a direction under section 81
Obligations to other contracting parties to the European Patent Convention
61. Recognition of patent decision of competent authorities of other states
62. Procedure for obtaining evidence for proceedings under the European Patent
Convention
63. Communication of information to the European Patent Office
PART 6
INTERNATIONAL APPLICATIONS
Interpretation
64. Interpretation relating to international applications
Filing at the Patent Office
65. Filing of international applications at the Patent Office
Beginning the national phase, international exhibitions and altered prescribed periods
66. Beginning of national phase
67. International exhibitions
68. Altered prescribed periods
Translations
69. Necessary translations under section 89A(3) and (5)
70. Requirements of necessary translations
Application deemed withdrawn or filing date refused under the Patent Co-operation Treaty
71. Directions under section 89(3) and (5)
72. Circumstance prescribed for the purposes of section 89(3)
PART 7
PROCEEDINGS HEARD BEFORE THE COMPTROLLER
Introductory
73. Scope and interpretation
74. Overriding objective
75. Publication of notices
Conduct of hearings
76. Starting proceedings
77. Notification of the parties
78. The counter-statement
79. Copies of documents
80. Evidence rounds and the hearing
81. Alteration of time limits
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82. General powers of the comptroller in relation to proceedings before him
83. Striking out a statement of case and summary judgment
84. Hearings in public
Miscellaneous
85. Security for costs or expenses
86. Powers of comptroller to compel attendance of witnesses and production of
documents
87. Evidence in proceedings before the comptroller
88. Proceedings in Scotland
89. Proceedings started under section 46(3) by a person other than the proprietor
90. Licences following entitlement proceedings
91. Period prescribed for applications by employee for compensation
PART 8
OPINIONS
Interpretation
92. Interpretation
Request for opinion
93. Request for an opinion under section 74A
94. Refusal or withdrawal of request
95. Notification and advertisement of request
96. Submission of observations and observations in reply
97. Issue of the opinion
Review of opinion
98. Review of opinion
99. Procedure on review
100. Outcome of review
PART 9
MISCELLANEOUS
Agents and advisers
101. Agents
102. Appointing advisers
Address for service
103.* Address for service
104.* Failure to furnish an address for service
Corrections and remission of fees
105. Correction of errors
106. Remission of fees
107. Correction of irregularities
Time limits and delays
108. Extension of time limits
109. Extension of time limits specified by comptroller
110. Interrupted days
111. Delays in communication services
Copies available to the comptroller
112. Copies available to the comptroller
Translations
113. Translations
114. Translations in proceedings in relation to a European patent (UK)
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115. Establishing the accuracy of translations
Supplementary Protection Certificates
116. Supplementary protection certificates
Publications
117. The journal
118. Reports of cases
119. Publication and sale of documents
Transitional provisions and revocations
120. Transitional provisions and revocations
SCHEDULE 1 — BIOLOGICAL MATERIAL
SCHEDULE 2 — FORMAL AND OTHER REQUIREMENTS
PART 1 — REQUIREMENTS: ALL DOCUMENTS
PART 2 — REQUIREMENTS: DOCUMENTS (OTHER THAN
DRAWINGS)
PART 3 — REQUIREMENTS: DRAWINGS
PART 4 — OTHER REQUIREMENTS
SCHEDULE 3 — PROCEEDINGS HEARD BEFORE THE COMPTROLLER
PART 1 — APPLICATIONS, REFERENCES AND REQUESTS
PART 2 — OPPOSITIONS WHICH START PROCEEDINGS
PART 3 — OPPOSITIONS AFTER PROCEEDINGS HAVE STARTED
PART 4 — RULES WHICH APPLY TO ANY PROCEEDINGS HEARD
BEFORE THE COMPTROLLER
PART 5 — RULES WHICH APPLY TO A REVIEW OF AN OPINION
SCHEDULE 4 — EXTENSION OF TIME LIMITS
PART 1 — PERIODS OF TIME THAT CANNOT BE EXTENDED
PART 2 — PERIODS OF TIME THAT MAY BE EXTENDED UNDER
RULE 108(2) OR 108(3)
PART 3 — PERIODS OF TIME TO WHICH RULE 108(5) AND 108(7)
RELATE
SCHEDULE 5 — TRANSITIONAL PROVISIONS
SCHEDULE 6 — REVOCATIONS
The Secretary of State makes the following Rules in exercise of the powers conferred upon him by
sections 14(6), 25(5), 32, 74B, 77(9), 92, 123, 125A and 130(2) of the Patents Act 1977(a).
In accordance with section 8 of the Tribunals and Inquiries Act 1992(b), the Secretary of State has
consulted the Administrative Justice and Tribunals Council.
(a) 1977 c. 37; section 74B was inserted by the Patents Act 2004 (c.16); section 123 was amended by the Copyright, Designs and Patents Act 1988 (c. 48), Schedule 5, paragraph 29, and the Patents Act 2004 (c.16), Schedule 2, paragraph 26; section 125A was inserted by the Copyright, Designs and Patents Act 1988, Schedule 5, paragraph 30, and was amended by SI 2000/2037.
(b) 1992 c. 53; the definition of “Council” has been amended by the Tribunals, Courts and Enforcement Act 2007 (c.15), Schedule 8, paragraph 30.
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PART 1
INTRODUCTORY
Citation and commencement
1. These Rules may be cited as the Patents Rules 2007 and shall come into force on 17th
December 2007.
General interpretation
2.—(1) In these Rules—
“the Act” means the Patents Act 1977 and “section”, unless the contrary intention appears,
means a section of the Act;
“application number” includes file number;
“compliance date” means the last day of the compliance period;
“compliance period” means the period prescribed by rule 30;
“declared priority date” has the meaning given to it by rule 3(1);
“initiation date” means the date on which a new application was initiated by documents,
mentioned in section 15(1), being filed at the Patent Office;
“new application” means a new application filed under section 8(3), 12(6) or 37(4) or as
mentioned in section 15(9);
“no declared priority date” has the meaning given to it by rule 3(2);
“Patents Form” has the meaning given to it by rule 4(1);
“priority application” means an earlier relevant application specified in a declaration for the
purposes of section 5(2);
“sequence” and “sequence listing” have the same meaning as they have under the Patent Co-
operation Treaty;
“start date” means, in relation to rules 106(6)(a) and 116 on supplementary protection
certificates, the first day following the day on which the basic patent expires; and
“termination” has the meaning given by section 20B(7) and “terminated” shall be construed
accordingly.
(2) Where a period of time has been altered under rules 20(4), 71(7), 81 or 107 to 111, any
reference in these Rules to the period of time shall be construed as a reference to the period as
altered.
(3) For the purposes of these Rules a document is available to the comptroller where—
(a) it is in electronic storage (whether in the Patent Office or elsewhere) and he can access
it by using electronic communications; or
(b) it is kept at the Patent Office,
and he has been furnished with sufficient information to obtain a copy of the document.
(4) But a document may be treated as unavailable to the comptroller where—
(a) its accuracy cannot be verified to his satisfaction; or
(b) he has to pay to access it.
The declared priority date
3.—(1) For the purposes of these Rules the “declared priority date” is the date of filing of the
earliest relevant application specified in a declaration made for the purposes of section 5(2) in, or in connection with, an application in suit.
(2) For the purposes of these Rules there is “no declared priority date” if—
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(a) no declaration has been made for the purposes of section 5(2); or
(b) every declaration made has been withdrawn or disregarded before the end of the
relevant period.
(3) For the purposes of paragraph (2)(b) the relevant period ends—
(a) in the case of an application which falls to be treated as an application for a patent
under the Act by virtue of a direction under section 81, when that direction is given;
(b) in the case of an international application for a patent (UK), when the national phase of
the application begins; or
(c) in any other case, when preparations for the application’s publication have been
completed by the Patent Office.
(4) In this rule references to declarations made for the purposes of section 5(2) include
declarations treated as made for those purposes.
Forms and documents
4.—(1) The forms of which the use is required by these Rules are those set out in directions
under section 123(2A) and are referred to in these Rules as Patents Forms.
(2) Such a requirement to use a form is satisfied by the use of a form which is acceptable to the
comptroller and contains the information required by the form as so set out.
(3) Such directions must be published in accordance with rule 117(c).
(4) Unless the comptroller otherwise directs, to file any form or other document under the Act
or these Rules only one side of each sheet of paper must be used and the other side must remain
blank.
(5) But where the information is delivered in electronic form or using electronic
communications—
(a) a requirement under these Rules to use a form; and
(b) the requirements in paragraph (4),
do not apply.
(6) Where any form or other document is delivered to the comptroller in electronic form or
using electronic communications, any requirement in these Rules for multiple copies of that form
or document to be filed does not apply.
PART 2
APPLICATIONS FOR PATENTS
International exhibitions
International exhibitions
5.—(1) The statement mentioned in section 2(4)(c) that an invention has been displayed at an
international exhibition must be in writing.
(2) The prescribed period for the purposes of section 2(4)(c) is four months beginning with the
date of filing.
(3) But paragraphs (1) and (2) do not apply where rule 67(2) applies.
(4) The written evidence required by section 2(4)(c) must be in the form of—
(a) a certificate issued by the authority responsible for the international exhibition; and
(b) a statement, duly authenticated by that authority, identifying the invention as being the
invention displayed at the exhibition.
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(5) The certificate must include the opening date of the exhibition (or if later, the date on
which the invention was first displayed).
(6) The comptroller may publish a statement in the journal that a particular exhibition falls
within the definition of “international exhibition” in section 130(1) (interpretation).
Declarations of priority
Declaration of priority for the purposes of section 5(2) (priority date)
6.—(1) Subject to paragraph (2) and rule 7(9), a declaration for the purposes of section 5(2)
must be made at the time of filing the application for a patent.
(2) Subject to rule 7(9), 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;
(b) it is made before the end of the period of sixteen months beginning 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, or any earlier, 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) for publication of the
application during the period prescribed for the purposes of that section; or
(b) any request made was withdrawn before preparations for the application’s publication
have been completed by the Patent Office.
(4) A declaration for the purposes of section 5(2) must specify—
(a) the date of filing of each earlier relevant application; and
(b) the country it was filed in or in respect of.
(5) In the case of a new application filed as mentioned in section 15(9), no declaration shall be
made which has not also been made in, or in connection with, the earlier application.
Request to the comptroller for permission to make a late declaration under section 5(2B)
7.—(1) The period prescribed for the purposes of section 5(2A)(b) is two months.
(2) Subject to paragraph (4), a request under section 5(2B) must be—
(a) made on Patents Form 3; 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).
(3) Where that evidence does not accompany the request, the comptroller must specify a period
within which the evidence must be filed.
(4) In relation to a new application, a request under section 5(2B) may be made in writing,
instead of on Patents Form 3, and no evidence shall accompany it.
(5) Subject to paragraph (6) and rule 66(3), a request under section 5(2B) may only be made
before the end of the period allowed under section 5(2A)(b).
(6) Where a new application is filed after the end of the period allowed under section 5(2A)(b),
a request under section 5(2B) may be made on the initiation date.
(7) A request under section 5(2B) may only be made where—
(a) the condition in paragraph (8) is met; or
(b) the request is made in relation to an international application for a patent (UK).
(8) The condition is that—
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(a) the applicant has not made a request under section 16(1) for publication of the
application during the period prescribed for the purposes of that section; or
(b) any request made was withdrawn before preparations for the application’s publication
have been completed by the Patent Office.
(9) Where an applicant makes a request under section 5(2B), he must 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)
8.—(1) In respect of each priority application to which this paragraph applies the applicant
must, before the end of the relevant period, furnish to the comptroller the application number of
that application; otherwise the comptroller must disregard the declaration made for the purposes of
section 5(2), in so far as it relates to the priority application.
(2) In respect of each priority application to which this paragraph applies the applicant must,
before the end of the relevant period, furnish to the comptroller a copy of that application—
(a) duly certified by the authority with which it was filed; or
(b) otherwise verified to the satisfaction of the comptroller,
otherwise the comptroller must disregard the declaration made for the purposes of section 5(2), in
so far as it relates to the priority application.
(3) Paragraph (1) applies to every priority application except where the application in suit is an
international application for a patent (UK) and the application number of the priority application
was indicated in compliance with the Patent Co-operation Treaty.
(4) Paragraph (2) applies to every priority application except where—
(a) 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 the Patent Co-operation
Treaty; or
(b) the priority application or a copy of the priority application is available to the
comptroller.
(5) For the purposes of this rule the relevant period is sixteen months beginning with the
declared priority date, subject to rule 21.
Translation of priority documents
9.—(1) The comptroller may direct the applicant to comply with the requirements of paragraph
(4), if—
(a) a copy of the priority application has been—
(i) furnished in accordance with rule 8(2),
(ii) filed in compliance with the European Patent Convention,
(iii) filed in compliance with the Patent Co-operation Treaty, or
(iv) made by the comptroller in accordance with rule 112(2);
(b) that copy is in a language other than English or Welsh; 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, is new or 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) But the comptroller shall not specify a period that ends after the grant of the patent.
(4) Where the comptroller has given a direction under paragraph (1), the applicant must, before
the end of the period specified by the comptroller, file—
(a) an English translation of the priority application; or
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(b) a declaration that the application in suit is a complete translation into English of the
priority application,
otherwise the comptroller must disregard the declaration made for the purposes of section 5(2), in
so far as it relates to the priority application.
Mention of the inventor
Mention of the inventor
10.—(1) An inventor or joint inventor of an invention, if not mentioned in any published
application for a patent, or in any patent granted, for the invention, must be mentioned in an
addendum or an erratum to the application or patent.
(2) A person who alleges that any person ought to have been mentioned as the inventor or joint
inventor of an invention may apply to the comptroller for that person to be so mentioned—
(a) in any patent granted for the invention; and
(b) if possible in any published application for a patent for the invention,
and, if not so mentioned, in the manner prescribed by paragraph (1).
(3) Subject to rules 21, 58(4), 59(3) and 68(2), the period prescribed for the purposes of section
13(2) is sixteen months beginning with—
(a) where there is no declared priority date, the date of filing of the application; or
(b) where there is a declared priority date, that date.
(4) A statement filed under section 13(2) must be made on Patents Form 7.
Waiving the right to be mentioned
11.—(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) must—
(a) include his reasons for making the application; and
(b) be accepted by the comptroller where the comptroller is satisfied by those reasons.
(3) An application by an inventor under paragraph (1)(b) must 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) shall be construed accordingly.
Form and content of applications
Applications for the grant of patents under sections 14 and 15
12.—(1) A request for the grant of a patent must be made on Patents Form 1.
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(2) Where the documents filed at the Patent Office to initiate an application for a patent do not
include the applicant’s name and address, the comptroller shall notify the applicant that his name
and address are required.
(3) Where the applicant has been so notified, he must, before the end of the period of two
months beginning with the date of the notification, file his name and address; otherwise the
comptroller may refuse his application.
(4) The specification mentioned in section 14(2)(b) must be preceded by the title of the
invention and must be set out in the following order—
(a) description;
(b) the claim or claims; and
(c) any drawing referred to in the description or any claim.
(5) But paragraph (4) does not apply where an application is delivered in electronic form or
using electronic communications.
(6) The title of the invention must be short and indicate the matter to which the invention
relates.
(7) Where the specification includes drawings, the description must include a list of drawings
briefly describing each of them.
(8) 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 or Welsh; and
(b) the applicant has not filed a translation into English or Welsh of that thing,
the comptroller shall notify the applicant that a translation is required.
(9) Where the applicant has been so notified, he must, before the end of the period of two
months beginning with the date of the notification, file a translation; otherwise the comptroller
may refuse his application.
Biological material and sequence listings
13.—(1) The provisions of Schedule 1 prescribe the circumstances in which the specification of
an application for a patent, or of a patent, for an invention which involves the use of or concerns
biological material is to be treated as disclosing the invention in a manner which is clear enough
and complete enough for the invention to be performed by a person skilled in the art.
(2) Where the specification of an application for a patent discloses a sequence, it must include
a sequence listing.
(3) Where an applicant has not provided a sequence listing on filing the application, the
comptroller may specify a period within which the applicant must provide the sequence listing;
and if it is not provided within this period, the comptroller may refuse the application.
(4) Where a sequence listing is provided after the date of filing the application, the listing must
be accompanied by a declaration that it does not contain matter extending beyond the sequence
disclosed in the application.
(5) The sequence listing must comply with any requirements and standards adopted under the
Patent Co-operation Treaty for the presentation of sequence listings in patent applications.
(6) A sequence listing shall, if it is reasonably possible, be delivered to the comptroller in
electronic form or using electronic communications, even where the application for the patent is
not delivered in electronic form or using electronic communications.
(7) A sequence listing may be set out either in the description or at the end of the application,
but if set out at the end of the application rule 12(4) shall not apply.
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Size and presentation of application
14.—(1) The contents of all documents (including annotations to drawings) contained in an
application for a patent must be in English or Welsh.
(2) The requirements for the documents contained in an application for a patent (other than
drawings) are set out in Parts 1 and 2 of Schedule 2.
(3) The requirements for a drawing contained in an application are set out in Parts 1 and 3 of
that Schedule.
(4) All documents contained in an application (including drawings) must comply with the
requirements set out in Part 4 of that Schedule.
(5) Paragraphs (2) and (3) do not apply to an application, or a sequence listing contained in an
application, which is delivered in electronic form or using electronic communications.
The abstract
15.—(1) The abstract must start with a title for the invention.
(2) The abstract must contain a concise summary of the matter contained in the specification.
(3) That summary must include—
(a) an indication of the technical field to which the invention belongs;
(b) a technical explanation of the invention;
(c) the principal use of the invention.
(4) Where the specification contains more than one drawing, the abstract must include an
indication of the drawing which should accompany the abstract when it is published.
(5) Where it appears to the comptroller that a drawing included in the specification better
characterises the invention he shall publish it with the abstract.
(6) Where a feature of the invention included in the abstract is illustrated in a drawing, the
feature must be followed by the reference for that feature used in that drawing.
(7) The abstract must not contain any statement on the merits or value of the invention or its
speculative application.
Single inventive concept
16.—(1) For the purposes of the Act, two or more inventions shall be treated as being so linked
as to form a single inventive concept where there exists between those inventions a technical
relationship which involves one or more of the same or corresponding special technical features.
(2) In paragraph (1) “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)
17.—(1) A reference made under section 15(1)(c)(ii) must include—
(a) the date of filing of the earlier relevant application;
(b) its application number; and
(c) the country it was filed in or in respect of.
(2) Subject to paragraph (3), the copy of the application provided under section 15(10)(b)(ii)
must—
(a) be duly certified by the authority with which it was filed or otherwise verified to the
satisfaction of the comptroller; and
(b) where it is in a language other than English or Welsh, be accompanied by—
(i) a translation into English of that application, or
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(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 available to the comptroller it shall,
for the purposes of section 15(10)(b)(ii), be treated as having been filed in accordance with rules.
Missing parts
18.—(1) The period prescribed for the purposes of section 15(5)(b) and (6) is the period
beginning with the date of filing of the application for a patent and ending with the date of the
preliminary examination.
(2) But 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 beginning with 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) must—
(a) be made in writing;
(b) include sufficient information to identify where in the priority application the contents
of the document filed under section 15(5)(b) were included; and
(c) 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 priority application does not contain every missing part filed under section 15(5); or
(b) the applicant fails, before the end of the relevant period, to furnish to the comptroller
copies of all earlier relevant applications—
(i) duly certified by the authority with which they were filed, or
(ii) otherwise verified to the satisfaction of the comptroller.
(6) But paragraph (5)(b) does not apply in respect of an earlier relevant application where that
application or a copy of the application is available to the comptroller.
(7) For the purposes of paragraph 5(b) the relevant period is—
(a) sixteen months beginning with the declared priority date; or
(b) if it expires earlier, the period of four months beginning with the date on which the
request was made under section 15(7)(b).
New applications
New applications filed as mentioned in section 15(9)
19.—(1) A new application for a patent may be filed as mentioned in section 15(9)—
(a) before the end of the relevant period; or
(b) if earlier, before the earlier application is terminated or withdrawn.
(2) Such an application must include a statement that it is filed as mentioned in section 15(9).
(3) For the purposes of this rule the relevant period is—
(a) where an applicant is notified under section 18(4) that his earlier application complies
with the requirements of the Act and these Rules, two months beginning with the date
of that notification; or
(b) in any other case, the period ending three months before the compliance date of the
earlier application.
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New applications under sections 8(3), 12(6) and 37(4)
20.—(1) The period prescribed for filing a new application under section 8(3) or section 12(6) is
the relevant period.
(2) A new application for a patent may be filed under section 37(4) before the end of the
relevant period.
(3) For the purposes of this rule the relevant period is—
(a) where the comptroller’s decision to make an order under those provisions is not
appealed, three months beginning with the date on which the order was made; or
(b) where that decision is appealed, three months beginning with the date on which the
appeal was finally disposed of.
(4) But the comptroller may, if he thinks fit, shorten the relevant period after giving the parties
such notice and subject to such conditions as the comptroller may direct.
Extensions for new applications
21.—(1) Where a new application is filed—
(a) the period prescribed for the purposes of section 13(2) is—
(i) two months beginning with its initiation date, or
(ii) if it expires later, the period prescribed by rule 10(3); and
(b) the relevant period for the purposes of rule 8 is—
(i) two months beginning with its initiation date, or
(ii) if it expires later, the period specified in rule 8(5),
and the reference in rule 10(3) to the date of filing of the application is a reference to the date of
filing of the earlier application.
(2) But where the new application is filed less than six months before the compliance date—
(a) the period prescribed for the purposes of section 13(2) is the period ending with its
initiation date; and
(b) the relevant period for the purposes of rule 8 is the period ending with its initiation date.
(3) The second requirement in Schedule 1 must be complied with—
(a) on the initiation date; or
(b) if it expires later, before the end of the relevant period specified in paragraph 3(3) of
that Schedule.
Periods for filing contents of application
Periods prescribed for the purposes of sections 15(10) and 17(1)
22.—(1) The period prescribed for the purposes of section 15(10)(a) and (b)(i) is the relevant
period.
(2) Subject to rules 58(4), 59(3) and 68(3), the period prescribed for the purposes of section
15(10)(c) and (d) and section 17(1) is the relevant period.
(3) The period prescribed for the purpose of section 15(10)(b)(ii) is four months beginning
with the date of filing of the application.
(4) But paragraphs (1) to (3) do not apply to a new application.
(5) In relation to a new application—
(a) the period prescribed for the purposes of section 15(10)(a), (b)(i), (c) and (d) and
section 17(1) is—
(i) two months beginning with its initiation date, or
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(ii) if it expires later, the relevant period; and
(b) the period prescribed for the purposes of section 15(10)(b)(ii) is—
(i) two months beginning with its initiation date, or
(ii) if it expires later, the period of four months beginning with the date of filing of the
earlier application,
and the reference in paragraph (7) to the date of filing of the application is a reference to the date
of filing of the earlier application.
(6) But where the new application is filed less than six months before the compliance date, the
period prescribed for the purposes of section 15(10)(a) to (d) and section 17(1) is the period
ending with its initiation date.
(7) For the purposes of this rule the relevant period is—
(a) where there is no declared priority date, twelve months beginning with the date of filing
of the application; or
(b) where there is a declared priority date—
(i) twelve months beginning with the declared priority date, or
(ii) if it expires later, the period of two months beginning with the date of filing of the
application.
Preliminary examination
Preliminary examination under section 15A
23.—(1) On the preliminary examination under section 15A of an application the examiner shall
determine whether the application complies with the requirements of rules 6 to 9.
(2) The examiner must report to the comptroller his determinations under paragraph (1), and
the comptroller must notify the applicant accordingly.
Correcting a declaration made for the purposes of section 5(2)
24.—(1) Where, on the preliminary examination under section 15A of an application, 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 must report this finding to the comptroller, and the comptroller must notify the applicant
accordingly.
(2) Where the comptroller has notified the applicant under paragraph (1), the applicant must,
before the end of the period of two months beginning with the date of that notification, provide
the comptroller with a corrected date; otherwise the comptroller must disregard the declaration in
so far as it relates to the earlier relevant application.
(3) In paragraph (2) “corrected date” means a date that would not have been reported by the
examiner under paragraph (1).
Formal requirements
25.—(1) Subject to paragraphs (2) and (3), the requirements of the following provisions of these
Rules are formal requirements—
(a) rule 12(1) (application for a patent on Patents Form 1);
(b) rule 14(1) (application in English or Welsh);
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(c) rule 14(2) and (3) (form of documents and drawings).
(2) Where an application is delivered in electronic form or using electronic communications,
only the requirements of rule 14(1) are formal requirements.
(3) Where an international application for a patent (UK) was filed in accordance with the
provisions of the Patent Co-operation Treaty, the requirements mentioned in paragraph (1) shall
be treated as complied with to the extent that the application complies with any corresponding
provision of that Treaty.
Publication of application
Publication of application
26.—(1) The period prescribed for the purposes of section 16(1) is eighteen months beginning
with—
(a) where there is no declared priority date, the date of filing of the application; or
(b) where there is a declared priority date, that date.
(2) Where a person’s application under rule 11(1)(a) or (b) has been accepted by the
comptroller, the comptroller must ensure that the application for the patent as published does not
mention that person’s name and address as those of the person believed to be the inventor (or, as
the case may be, that person’s address as that of the person so believed).
Search and substantive examination
Search under section 17
27.—(1) A request under section 17(1)(c)(i) for a search must be made on Patents Form 9A.
(2) The comptroller may, if he thinks fit, send to the applicant a copy of any document (or any
part of it) referred to in the examiner’s report made under section 17.
(3) Where an examiner conducts a search in relation to the first only of two or more
inventions, in accordance with section 17(6), he must report this fact to the comptroller, and the
comptroller must notify the applicant accordingly.
(4) The applicant must pay any search fee in relation to those inventions (other than the first)
on or before the relevant date.
(5) The relevant date is the first day of the three month period ending with the compliance date
of the application.
(6) The fee for a supplementary search under section 17(8), or a search under section 17(6),
must be accompanied by Patents Form 9A.
Request for substantive examination under section 18
28.—(1) A request under section 18 for a substantive examination of an application must be
made on Patents Form 10.
(2) Subject to paragraphs (3) and (4) and rules 60 and 68(4), the period prescribed for the
purposes of section 18(1) is six months beginning with the date the application was published.
(3) Where the comptroller has given directions under section 22(1) or (2) in relation to
information contained in the application, the period prescribed for the purposes of section 18(1)
is the relevant period.
(4) Paragraphs (2) and (3) do not apply to a new application.
(5) In relation to a new application, the period prescribed for the purposes of section 18(1) is—
(a) two months beginning with its initiation date; or
(b) if it expires later, the relevant period,
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and the reference in paragraph (7) to the date of filing of the application is a reference to the date
of filing of the earlier application.
(6) But where the new application is filed less than six months before the compliance date, the
period prescribed for the purposes of section 18(1) is the period ending with its initiation date.
(7) For the purposes of this rule the relevant period is two years beginning with—
(a) where there is no declared priority date, the date of filing of the application; or
(b) where there is a declared priority date, that date.
Substantive examination reports
29.—(1) Whenever the examiner reports to the comptroller under either section 18(3) or (4) on
whether the application complies with the requirements of the Act and these Rules, the
comptroller must send a copy of that report to the applicant.
(2) The comptroller may, if he thinks fit, send to the applicant a copy of any document (or any
part of it) referred to in the examiner’s report.
(3) For the purposes of rules 30 and 31—
(a) “first substantive examination report” means the first report sent to the applicant under
paragraph (1); and
(b) “first observations report” means a report sent to the applicant under paragraph (1)
which meets the condition in paragraph (4).
(4) The condition is that—
(a) a person has made observations to the comptroller under section 21(1) on the question
whether the invention is a patentable invention;
(b) the examiner has reported to the comptroller, as a consequence of those observations,
that the invention does not comply with the requirements of the Act or these Rules; and
(c) the comptroller has not previously sent to the applicant a report, relating to those
observations, under paragraph (1).
Period for putting application in order
30.—(1) The period prescribed for the purposes of sections 18(4) and 20(1) (failure of
application) is the compliance period.
(2) For the purposes of paragraph (1), subject to paragraphs (3) and (4), the compliance period
is—
(a) four years and six months beginning with—
(i) where there is no declared priority date, the date of filing of the application, or
(ii) where there is a declared priority date, that date; or
(b) if it expires later, the period of twelve months beginning with the date on which the first
substantive examination report is sent to the applicant.
(3) Subject to paragraph (4), where a new application is filed the compliance period is—
(a) where it is filed under section 8(3), 12(6) or 37(4)—
(i) the period specified in paragraph (2) in relation to the earlier application, or
(ii) if it expires later, the period of eighteen months beginning with the initiation date; and
(b) where it is filed as mentioned in section 15(9), the period specified in paragraph (2) in
relation to the earlier application.
(4) Where the first observations report is sent to the applicant during the last three months of
the period specified in paragraphs (2) or (3), the compliance period is three months beginning
with the date on which that report is sent.
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Amendment of application before grant
31.—(1) A request to amend an application for a patent under section 19(1) must be made in
writing.
(2) The conditions prescribed under section 19(1) are as follows.
(3) The applicant may amend his application only within the period beginning with the date on
which the applicant is informed of the examiner’s report under section 17(5) and ending with the
date on which the comptroller sends him the first substantive examination report.
(4) But after the end of this period, the applicant may—
(a) where the first substantive examination report states that his application complies with
the requirements of the Act and these Rules, amend his application once before the end
of the period of two months beginning with the date on which that report was sent; or
(b) where the first substantive examination report states that his application does not
comply with the requirements of the Act and these Rules—
(i) amend his application once at the same time as he makes his first observations on, or
amendments to, his application under section 18(3), and
(ii) if the first substantive examination report is sent before preparations for the
application’s publication have been completed by the Patent Office, amend his
application prior to any further amendment he may make under sub-paragraph (b)(i).
(5) However, the conditions in paragraphs (3) and (4) do not apply—
(a) where the comptroller consents to the amendment; or
(b) to an amendment of a request for the grant of a patent.
(6) Where the comptroller’s consent is required, or the applicant wishes to amend the request
for the grant of a patent, the applicant must include the reasons for the amendment.
Reinstatement of applications under section 20A
32.—(1) A request under section 20A for the reinstatement of an application must be made
before the end of the relevant period.
(2) For this purpose the relevant period is—
(a) two months beginning with the date on which the removal of the cause of non-
compliance occurred; or
(b) if it expires earlier, the period of twelve months beginning with the date on which the
application was terminated.
(3) The request must be made on Patents Form 14.
(4) Where the comptroller is required to publish a notice under section 20A(5), it must be
published in the journal.
(5) The applicant must file evidence in support of that request.
(6) Where that evidence does not accompany the request, the comptroller must specify a period
within which the evidence must be filed.
(7) Where, on consideration of that evidence, the comptroller is not satisfied that a case for an
order under section 20A has been made out, he must notify the applicant accordingly.
(8) The applicant may, before the end of the period of one month beginning with the date of
that notification, request to be heard by the comptroller.
(9) Where the applicant requests a hearing, the comptroller must give him an opportunity to be
heard, after which the comptroller shall determine whether the request under section 20A shall
be allowed or refused.
(10) Where the comptroller reinstates the application after a notice was published under
paragraph (4), he must advertise in the journal the fact that he has reinstated the application.
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(11) 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 by third parties on patentability
33.—(1) The comptroller must send to the applicant a copy of any observations on patentability
he receives under section 21.
(2) But paragraph (1) does not apply to any observation which, in the opinion of the
comptroller, would—
(a) disparage any person in a way likely to damage such person; or
(b) be generally expected to encourage offensive, immoral or anti-social behaviour.
(3) The comptroller may, if he thinks fit, send to the applicant a copy of any document referred
to in the observations.
(4) The comptroller must send to an examiner any observations on patentability.
(5) But paragraph (4) does not apply where the observations are received after the examiner
has reported under section 18(4) that an application complies with the requirements of the Act
and these Rules.
PART 3
GRANTED PATENTS
Certificate and amendment
Certificate of grant
34. The certificate of grant of a patent must be in a form which includes—
(a) the name of the proprietor;
(b) the date of filing of the application; and
(c) the number of the patent.
Amendment of specification after grant
35.—(1) An application by the proprietor of a patent for the specification of the patent to be
amended must—
(a) be made in writing;
(b) identify the proposed amendment; and
(c) state the reason for making the amendment.
(2) The application must, if it is reasonably possible, be delivered to the comptroller in
electronic form or using electronic communications.
(3) The comptroller may, if he thinks fit, direct the proprietor to file a copy of the specification
with the amendment applied for marked on it.
(4) Where the specification of a European patent (UK) was published in a language other than
English, the proprietor must file a translation into English of the part of the specification which
he is applying to amend and a translation of the amendment.
(5) The comptroller may, if he thinks fit, direct the proprietor to file a translation into English
of the specification as published.
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(6) Where the court or the comptroller allows the proprietor of a patent to amend the
specification of the patent, the comptroller may direct him to file an amended specification
which complies with the requirements of Schedule 2.
Renewal
Renewal of patents: general
36.—(1) In this rule and in rules 37 to 41—
“renewal date” has the meaning given in rules 37(2) to (4) and 38(3);
“renewal fee” means the fee prescribed in respect of a renewal date;
“renewal period” means the period prescribed by rule 37 or 38 for the payment of a renewal
fee.
(2) If the renewal fee is not paid before the end of the renewal period, the patent shall cease to
have effect at the end of the renewal date.
(3) Patents Form 12 must be filed before the end of the renewal period.
(4) But where payment is made under section 25(4) or section 28(3), Patents Form 12 must
accompany the renewal fee and the prescribed additional fee.
(5) On receipt of the renewal fee the comptroller must issue a certificate of payment.
Renewal of patents: first renewal
37.—(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 renewal period is 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 during 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 renewal 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 during 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 renewal 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, three months ending with the last day of the month in which the first
renewal date falls.
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Renewal of patents: subsequent renewals
38.—(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 renewal period is 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
39.—(1) This rule applies where the renewal fee has not been received by the end of the renewal
period.
(2) The comptroller must, before the end of the period of six weeks beginning immediately
after the end of the renewal period, and if the fee remains unpaid, send a renewal notice to the
proprietor of the patent.
(3) The comptroller must 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 must remind the proprietor of the patent—
(a) that payment is overdue; and
(b) of the consequences of non-payment.
Restoration of lapsed patents under section 28
40.—(1) An application under section 28 for restoration of a patent may be made at any time
before the end of the period ending with the thirteenth month after the month in which the period
specified in section 25(4) ends.
(2) The application must be made on Patents Form 16.
(3) The notice of the application must be published in the journal.
(4) The applicant must file evidence in support of the application.
(5) If that evidence does not accompany the application, the comptroller must specify a period
within which the evidence shall be filed.
(6) If, on consideration of that evidence, the comptroller is not satisfied that a case for an order
under section 28 has been made out, he must notify the applicant accordingly.
(7) The applicant may, before the end of the period of one month beginning with the date of
that notification, request to be heard by the comptroller.
(8) If the applicant requests a hearing, the comptroller must give the applicant an opportunity
to be heard before he determines whether to grant or refuse the application under section 28.
(9) Where the comptroller grants the application he must advertise the fact in the journal.
Notification of lapsed patent
41.—(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 renewal period; and
24
(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 must, before the end of the period of six weeks beginning immediately
after 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 must send the notice to the address specified by rule 39(3).
Surrender and cancelling entry that licences available as of right
Surrender
42. The notice of an offer by a proprietor to surrender a patent must be in writing and include—
(a) a declaration that no action is pending before the court for infringement or revocation of
the patent; or
(b) where such an action is pending, the particulars of the action.
Application for, and cancellation of, an entry that licences are available as of right
43.—(1) An application under section 46(1) must be made on Patents Form 28.
(2) Where an entry is made in the register to the effect that licences under a patent are to be
available as of right, the comptroller must advertise the entry in the journal.
(3) An application under section 47(1) for the cancellation of an entry made under section 46
must be made on Patents Form 30.
(4) The period prescribed for the purposes of section 47(3) is two months beginning with the
date on which the entry was made under section 46.
PART 4
THE REGISTER AND OTHER INFORMATION
The register
Entries in the register
44.—(1) When an application for a patent is published, the comptroller must enter each of the
following matters in the register—
(a) the name of the applicant;
(b) the name and address of the person identified as the inventor;
(c) the address of the applicant and his address for service;
(d) the title of the invention;
(e) the date of filing of the application for a patent;
(f) the application number;
(g) where a declaration has been made for the purposes of section 5(2)—
(i) the date of filing of each earlier relevant application specified in the declaration,
(ii) its application number, and
(iii) the country it was filed in or in respect of; and
(h) the date of the application’s publication.
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(2) But where a person’s application under rule 11(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) Where an application for a patent has been published, the comptroller must enter each of
the following matters in the register as soon as practicable after the event to which they relate—
(a) the date on which a request is made by an applicant for the substantive examination of
his application;
(b) the date on which an application is terminated or withdrawn.
(4) When the patent is granted, the comptroller must enter each of the following matters in the
register—
(a) the date on which the comptroller granted the patent;
(b) the name of the proprietor of the patent;
(c) where the address of the proprietor or his address for service was not entered in the
register under paragraph (1), that address or address for service.
(5) In relation to a request for an opinion under section 74A, the comptroller must enter each
of the following matters in the register as soon as practicable after the event to which they
relate—
(a) a notice that a request under section 74A(1)(a) or (b) has been received;
(b) a notice that such a request has been refused or withdrawn;
(c) a notice that an opinion has been issued.
(6) A notice of any transaction, instrument or event mentioned in section 32(2)(b) or 33(3)
must be entered in the register as soon as practicable after it occurs (or, if later, when the
application is published).
(7) The comptroller may, at any time, enter in the register such other particulars as he thinks
fit.
Advertisement in relation to register
45. The comptroller may publish or advertise such things done under the Act or these Rules in
relation to the register as he thinks fit.
Copies of entries in, or extracts from, the register and certified facts
46.—(1) An application under section 32(6) for a certified copy of an entry in the register, or a
certified extract from the register, must be made on Patents Form 23.
(2) A person may apply on Patents Form 23 for an uncertified copy of an entry in the register
or an uncertified extract from the register and, on payment of the prescribed fee, he shall be
entitled to such a copy or extract.
(3) A person may apply on Patents Form 23 for a certificate which certifies that—
(a) an entry has or has not been made in the register; or
(b) something which the comptroller is authorised to do has or has not been done.
Registrations of transactions, instruments and events
47.—(1) An application to register (or in the case of an application for a patent which has not
been published, to give notice of) any transaction, instrument or event mentioned in section
32(2)(b) or 33(3) must—
(a) be made on Patents Form 21; and
(b) include evidence establishing the transaction, instrument or event.
(2) The comptroller may direct that such evidence as he may require in connection with the
application shall be sent to him within such period as he may specify.
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Copies of documents and corrections in relation to the register
Copies of documents
48.—(1) A person may apply to the comptroller for a certified copy of any relevant document
and, on payment of the prescribed fee, he shall be entitled to such a copy.
(2) A person may apply to the comptroller for an uncertified copy of any relevant document
and, on payment of the prescribed fee, he shall be entitled to such a copy.
(3) But a person is not entitled to a copy of a relevant document where—
(a) it is not available for inspection under section 118; or
(b) making or providing such a copy would infringe copyright.
(4) For the purposes of this rule a relevant document is any of the following—
(a) an application for a patent which has been published;
(b) a specification of a patent;
(c) any other document, or extract from any such document, kept at the Patent Office.
(5) An application under paragraph (1) or (2) must be made on Patents Form 23.
Correction of name, address and address for service
49.—(1) Any person may request that a correction be entered in the register or made to any
application or other document filed at the Patent Office in respect of any of the following—
(a) his name;
(b) his address;
(c) his address for service.
(2) A request under paragraph (1)(a) to correct a name must be made on Patents Form 20.
(3) Any other request under paragraph (1) must be made in writing.
(4) If the comptroller has reasonable doubts about whether he should make the correction—
(a) he must inform the person making the request of the reason for his doubts; and
(b) he may require that person to file evidence in support of the request.
(5) If the comptroller has no doubts (or no longer has doubts) about whether he should make
the correction, he must enter the correction in the register or make it to the application or
document.
(6) For the purposes of this rule a request for a correction includes a correction made for the
purposes of section 117.
Request for correction of error
50.—(1) Subject to rule 49, any person may request the correction of an error in the register or
in any document filed at the Patent Office in connection with registration.
(2) The request must be—
(a) made in writing; and
(b) accompanied by sufficient information to identify the nature of the error and the
correction requested.
(3) If the comptroller has reasonable 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.
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(4) If the comptroller has no doubts (or no longer has doubts) about whether 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).
Requests for information or documents
Restrictions on inspection of documents
51.—(1) For the purposes of section 118(1) the prescribed restrictions are those set out in
paragraphs (2) and (3).
(2) No document may be inspected—
(a) where that document was prepared by the comptroller, an examiner or the Patent Office
for internal use only;
(b) where the circumstances specified in section 118(4) exist, before the end of the period
of 14 days beginning with the date of the notification under rule 52(2);
(c) where that document is a request or application made under section 118 or rule 46(2),
48(2) or 54(1); or
(d) where that document includes matter—
(i) which in the comptroller’s opinion disparages any person in a way likely to damage
him, or
(ii) the inspection of which would in his opinion be generally expected to encourage
offensive, immoral or anti-social behaviour.
(3) Unless in a particular case the comptroller otherwise directs, no document may be
inspected—
(a) where that document was filed at the Patent Office in connection with an application
under section 40(1) or (2) or 41(8);
(b) where that document is treated as a confidential document under rule 53;
(c) where—
(i) that document was prepared by the comptroller, an examiner or the Patent Office other
than for internal use, and
(ii) it contains information which the comptroller considers should remain confidential;
(d) where that document relates to an international application for a patent and the
International Bureau would not be permitted to allow access to that document under the
Patent Co-operation Treaty; or
(e) where—
(i) the comptroller has accepted a person’s application under rule 11(1)(a) or (b), and
(ii) that person’s name and address can be identified from that document as those of the
inventor or of the person believed to be the inventor (or, as the case may be, his
address can be so identified).
(4) In this rule references to a document include part of a document.
Request for information where section 118(4) applies
52.—(1) Where the circumstances specified in section 118(4) exist, a request under section
118(1) must be accompanied by evidence verifying their existence.
(2) The comptroller must notify the applicant for the patent of any request.
(3) The notification must be accompanied by a copy of the request and the accompanying
evidence.
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(4) The applicant may, before the end of the period of 14 days beginning with the date of the
notification, inform the comptroller that the circumstances specified in section 118(4) do not
exist; otherwise the comptroller may treat him as accepting that those circumstances exist.
Confidential documents
53.—(1) Where a person files a document at the Patent Office or sends it to an examiner or the
comptroller, any person may request that the document be treated as a confidential document.
(2) The comptroller must refuse any request where it relates to—
(a) a Patents Form; or
(b) any document filed in connection with a request under section 74A.
(3) A request to treat a document as confidential must—
(a) be made before the end of the period of 14 days beginning with the date on which the
document was—
(i) filed at the Patent Office, or
(ii) received by the comptroller, an examiner or the Patent Office; and
(b) include reasons for the request.
(4) Where a request has been made under paragraph (1), the document must be treated as
confidential until the comptroller refuses that request or gives a direction under paragraph (5).
(5) If it appears to the comptroller that there is good reason for the document to remain
confidential, he may direct that the document shall be treated as a confidential document;
otherwise he must refuse the request made under paragraph (1).
(6) But where the comptroller believes there is no longer a good reason for the direction under
paragraph (5) to continue in force, he must revoke it.
(7) In this rule references to a document include part of a document.
Requests for certain information
54.—(1) Where a person requests to be notified of a relevant event, he must use Patents Form
49.
(2) Where a person has made such a request, the comptroller must notify him that the relevant
event has occurred as soon as practicable after the event.
(3) But the comptroller shall not give him information or permit him to inspect a document
unless he would be entitled to such information or to inspect such a document under section 118.
(4) A request on Patents Form 49 must be for information regarding a single relevant event
only.
(5) For the purposes of paragraph (1), in relation to an application for a patent, each of the
following is a relevant event—
(a) an applicant requesting, or failing to request, a substantive examination before the end
of the period prescribed for the purposes of section 18(1);
(b) the application being published;
(c) the notice of grant of the patent being published under section 24;
(d) the application being terminated or withdrawn.
(6) For the purposes of paragraph (1), in relation to a patent, each of the following is a relevant
event—
(a) a request for an opinion under section 74A;
(b) the patent ceasing to have effect by reason of section 25(3);
(c) the renewal fee and any additional fee being paid during the period specified in section
25(4);
29
(d) an application being made for the restoration of the patent which has ceased to have
effect.
(7) For the purposes of paragraph (1), in relation to a patent or an application for a patent, each
of the following is a relevant event—
(a) an entry being made in the register;
(b) a document becoming available for inspection under section 118 (by reason of a
prescribed restriction no longer applying to the document);
(c) an application to register a transaction, instrument or event being made under rule 47;
(d) a matter being published in the journal.
Bibliographic information about an unpublished application
55. For the purposes of section 118(3)(b) the following bibliographic information is
prescribed—
(a) the name of the applicant;
(b) the title of the invention;
(c) the number of the application;
(d) the date of filing of the application;
(e) where a declaration has been made for the purposes of section 5(2)—
(i) the date of filing of each earlier relevant application specified in the declaration,
(ii) its application number, and
(iii) the country it was filed in or in respect of;
(f) where an application has been terminated or withdrawn, that information; and
(g) where a transaction, instrument or event mentioned in section 32(2)(b) or 33(3) is
notified to the comptroller, that information.
PART 5
EUROPEAN PATENTS (UK)
Translations
Translations of European patents (UK)
56.—(1) A translation into English of either—
(a) the specification of the European patent (UK), which is filed under section 77(6); or
(b) the claims of the specification of the application for a European patent (UK), which is
filed under section 78(7),
must be accompanied by Patents Form 54.
(2) The translation must comply with the requirements set out in Parts 1 to 3 of Schedule 2.
(3) The translation and Patents Form 54 must be filed in duplicate.
(4) But paragraph (2) does not apply where a translation is delivered in electronic form or
using electronic communications.
(5) Where the specification includes any drawings all annotations in French or German must
be replaced with annotations in English.
(6) The period prescribed for the purposes of section 77(6)(a) is three months beginning with
the date on which the grant of the patent was mentioned in the European Patent Bulletin.
30
(7) The period prescribed for the purposes of section 77(6)(b) is three months beginning with
the date of publication, by the European Patent Office, of the specification as amended.
(8) No translation may be filed under section 77(6)(a) or (b) before the beginning of the period
prescribed for the purposes of that provision.
(9) On a day appointed under section 77(9), section 77(6) and paragraphs (1)(a) and (5) to (8)
of this rule shall cease to have effect.
(10) The day appointed for the purpose of paragraph (9) shall be the day of the coming into
force of the Agreement on the application of Article 65 of the Convention on the Grant of
European Patents made in London on 17th October 2000(a).
Corrected translations
57.—(1) A corrected translation filed under section 80(3) must be accompanied by Patents Form
54.
(2) The corrected translation must comply with the requirements set out in Parts 1 to 3 of
Schedule 2.
(3) Where the corrected translation includes any drawings all annotations in French or German
must be replaced with annotations in English.
(4) The corrected translation and Patents Form 54 must be filed in duplicate.
(5) But paragraph (2) does not apply where a translation is delivered in electronic form or
using electronic communications.
(6) The period prescribed for the purposes of section 80(3) for payment of the prescribed fee is
14 days beginning with the day the corrected translation is filed.
Conversion requests
Procedure for making a conversion request under section 81(2)(b)(i)
58.—(1) A request under section 81(2)(b)(i) must be—
(a) made in writing; and
(b) accompanied by a copy of the notification by the European Patent Office that the
application has been deemed to be withdrawn.
(2) When making such a request, a person may also request the comptroller to send—
(a) a copy of his application for a European patent (UK); and
(b) a copy of the request,
to the central industrial property office of any contracting state designated in the application.
(3) The period prescribed for the purposes of section 81(2)(b)(i) is three months beginning
with the date of the notification mentioned in paragraph (1)(b).
(4) 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) is two months beginning with the date on
which the comptroller received that request.
(5) In paragraph (2) “contracting state” means a country which is a party to the European
Patent Convention.
Procedure for making a conversion request under section 81(2)(b)(ii)
59.—(1) The period prescribed for the purposes of section 81(2)(b)(ii) is twenty months
beginning with—
(a) Cm 5247.
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(a) where there is no declared priority date, the date of filing of the application; or
(b) where there is a declared priority date, that date.
(2) Where a request, transmitted under section 81(2)(b)(ii), has been received by the
comptroller, he must notify the applicant accordingly.
(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) is four months beginning with the date of
that notification.
Request for substantive examination following a direction under section 81
60. Where an application for a European patent (UK) falls to be treated as an application for a
patent under the Act by virtue of a direction under section 81, the period prescribed for the
purposes of section 18(1) is two years beginning with—
(a) where there is no declared priority date, the date of filing of the application; or
(b) where there is a declared priority date, that date.
Obligations to other contracting parties to the European Patent Convention
Recognition of patent decision of competent authorities of other states
61.—(1) Where in proceedings before the comptroller a person seeks recognition of a relevant
determination, he must furnish to the comptroller a copy of the determination duly certified by the
relevant official of the competent authority.
(2) In paragraph (1) “relevant determination” means the determination of a question to which
section 82 applies by the competent authority of a relevant contracting state other than the United
Kingdom.
Procedure for obtaining evidence for proceedings under the European Patent Convention
62.—(1) An application to the comptroller for an order under the Evidence (Proceedings in
Other Jurisdictions) Act 1975(a) as applied by section 92(1) must be—
(a) made in writing;
(b) supported by written evidence;
(c) accompanied by the request as a result of which the application is made, and where
appropriate, a translation of the request into English; and
(d) accompanied by the prescribed fee.
(2) The application must be made without notice.
(3) The comptroller may permit an officer of the European Patent Office to attend the hearing
and either—
(a) examine the witnesses; or
(b) request the comptroller to put specified questions to the witnesses.
Communication of information to the European Patent Office
63. The comptroller may authorise any information in the files of the Patent Office to be
communicated to the European Patent Office or to a competent authority of any country which is a
party to the European Patent Convention, except where that information cannot be communicated
under section 118.
(a) 1975 c. 34.
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PART 6
INTERNATIONAL APPLICATIONS
Interpretation
Interpretation relating to international applications
64. In this Part the following have the same meaning as they have in the Patent Co-operation
Treaty—
“competent receiving Office”;
“International Preliminary Examination Report”;
“International Preliminary Report on Patentability”;
“International Search Report”;
“International Searching Authority”;
“receiving Office”.
Filing at the Patent Office
Filing of international applications at the Patent Office
65.—(1) An international application for a patent filed at the Patent Office as a competent
receiving Office under the Patent Co-operation Treaty must be filed—
(a) in English or Welsh; and
(b) in triplicate.
(2) Where fewer than three copies of the application are filed, the comptroller may direct the
applicant to pay any copying costs.
(3) Where the Patent Office was acting on behalf of the International Bureau as the receiving
Office, the comptroller shall only transmit an international application for a patent filed at the
Patent Office to the International Bureau and the International Searching Authority after the
appropriate fee has been paid.
(4) A request under the Treaty for a certified copy of an international application for a patent
(including any corrections to that application) filed at the Patent Office as the competent
receiving Office must be filed on Patents Form 23.
Beginning the national phase, international exhibitions and altered prescribed periods
Beginning of national phase
66.—(1) The prescribed period for the purposes of section 89A(3)(a) and (5)(a) is thirty one
months beginning with—
(a) where there is no declared priority date, the date of filing of the application;
(b) where there is a declared priority date, that date.
(2) But where the applicant has been notified under rule 69(5), the period prescribed for the
purposes of section 89A(3)(a) and (5)(a) is three months beginning with the date of the
notification.
(3) Where an international application for a patent (UK) has begun the national phase, a
request for permission to make a late declaration may be made under section 5(2B) before the
end of the period of one month beginning with the date the national phase of the application
begins.
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International exhibitions
67.—(1) Paragraph (2) applies where an applicant, on filing an international application for a
patent (UK), states in writing to the receiving office that the invention has been displayed at an
international exhibition.
(2) The prescribed period for the purposes of section 2(4)(c) is two months beginning with the
date on which the national phase begins.
Altered prescribed periods
68.—(1) This rule applies to an international application for a patent (UK) which has begun the
national phase of the application.
(2) The period prescribed for the purposes of section 13(2) is—
(a) the period prescribed by rule 10(3); or
(b) if it expires later, the period of two months beginning with the date on which the
national phase begins.
(3) The period prescribed for the purposes of sections 15(10)(c) and (d) and 17(1) is—
(a) the period prescribed by rule 22(2) and (7); or
(b) if it expires later, the period of two months beginning with the date on which the
national phase begins.
(4) The period prescribed for the purposes of section 18(1) is—
(a) thirty three months beginning with—
(i) where there is no declared priority date, the date of filing of the application; or
(ii) where there is a declared priority date, that date; or
(b) if it expires later, the period of two months beginning with the date on which the
national phase begins.
Translations
Necessary translations under section 89A(3) and (5)
69.—(1) A translation is necessary for the purposes of section 89A(3) where any of the
following are not in English—
(a) the international application for a patent (UK) as published in accordance with the
Patent Co-operation Treaty;
(b) where the information mentioned in paragraph 3(2)(a) and (b) of Schedule 1 (biological
material) has been provided, that information.
(2) Where the applicant expressly requests the comptroller to proceed with the national phase
before the end of the period prescribed by rule 66(1), the translation must include the request and
abstract.
(3) But paragraph (2) does not apply where a copy of the application, as published in
accordance with the Patent Co-operation Treaty, is available to the comptroller.
(4) A translation of an amendment is necessary for the purposes of section 89A(5) where any
amendment made to the application is not in English and has either been—
(a) published under the Patent Co-operation Treaty; or
(b) annexed to the International Preliminary Examination Report.
(5) At the end of the period prescribed by rule 66(1), the comptroller must notify the applicant
that a necessary translation is missing if—
(a) a translation of the application has been filed, but a translation of the amendment has
not been filed; or
34
(b) the information mentioned in paragraph 3(2)(a) and (b) of Schedule 1 (biological
material) has been provided, but a translation of that information has not been filed,
and the prescribed fee has been paid.
Requirements of necessary translations
70.—(1) This rule applies to translations which are necessary for the purposes of section 89A(3)
and (5).
(2) Such a translation is necessary for only that part of the application which is in a language
other than English.
(3) Where the application includes a drawing which is annotated, the translation shall include
either—
(a) a copy of the original drawing where the original annotations have been replaced by
annotations in English; or
(b) a new drawing with the annotations in English.
(4) Where a title has been established for the application by the International Searching
Authority, the translation must include that title (and not any title which was included in the
application as it was originally filed).
(5) Where—
(a) the description of the invention includes a sequence listing; and
(b) the listing complies with the relevant requirements of the Patent Co-operation Treaty,
the translation of the application may exclude a translation of the sequence listing.
(6) This rule applies to translations of amendments as it applies to translations of applications
and accordingly references to “application” shall be construed as references to “amendment”.
Application deemed withdrawn or filing date refused under the Patent Co-operation Treaty
Directions under section 89(3) and (5)
71.—(1) The applicant may, before the end of the relevant period, make a written request to the
comptroller to give a direction under section 89(5).
(2) The applicant may notify the comptroller that the circumstances mentioned in section 89(3)
or rule 72 apply to his application.
(3) The request under paragraph (1) must be accompanied by—
(a) a statement of the reasons for the request; and
(b) the fee prescribed for the purposes of section 89A(3).
(4) The relevant period is two months beginning with the date on which—
(a) the International Bureau; or
(b) the receiving Office,
notifies the applicant that his international application for a patent (UK) is refused a filing date
under the Patent Co-operation Treaty.
(5) Where the applicant has made a request to the comptroller under paragraph (1), the
comptroller may direct the applicant to furnish him with any document, information or evidence
within such period as the comptroller may specify.
(6) Where the applicant fails, before the end of the period specified, to comply with a direction
given under paragraph (5), the comptroller may treat him as having withdrawn his request.
(7) Where section 89(3) applies or a direction has been given under section 89(5) the
comptroller may—
35
(a) alter any period of time (whether it has already expired or not) specified in the Act or
listed in Parts 1 to 3 of Schedule 4; and
(b) amend any document kept at the Patent Office in relation to the application,
subject to such conditions as the comptroller may direct.
Circumstance prescribed for the purposes of section 89(3)
72. The other circumstance prescribed for the purposes of section 89(3) is where the comptroller
determines that, in comparable circumstances in relation to an application under the Act (other
than an international application for a patent (UK)), he would have exercised his powers under
rule 107 or 108 to prevent the application being treated as withdrawn.
PART 7
PROCEEDINGS HEARD BEFORE THE COMPTROLLER
Introductory
Scope and interpretation
73.—(1) This Part applies to the following proceedings heard before the comptroller—
(a) applications, references and requests under the provisions mentioned in Part 1 of
Schedule 3;
(b) oppositions under the provisions mentioned in Part 2 of that Schedule.
(2) The rules listed in Part 4 of that Schedule apply to any proceedings heard before the
comptroller under the Act.
(3) In this Part—
“claimant” means a person who starts proceedings or is treated as starting proceedings under
rule 76(1);
“defendant” means a person who files a counter-statement under rule 77(6) or (8);
“statement of case” means the statement of grounds or the counter-statement and references to
a statement of case include part of the statement of case;
“statement of grounds” means a statement filed by the claimant;
“statement of truth” means a statement that the person making the statement believes that the
facts stated in a particular document are true; and
“witness statement” means a written statement signed by a person that contains the evidence
which that person would be allowed to give orally.
Overriding objective
74.—(1) The rules in this Part set out a procedural code with the overriding objective of
enabling the comptroller to deal with cases justly.
(2) Dealing with a case justly includes, so far as is practicable—
(a) ensuring that the parties are on an equal footing;
(b) saving expense;
(c) dealing with the case in ways which are proportionate—
(i) to the amount of money involved,
(ii) to the importance of the case,
(iii) to the complexity of the issues, and
36
(iv) to the financial position of each party;
(d) ensuring that it is dealt with expeditiously and fairly; and
(e) allotting to it an appropriate share of the resources available to the comptroller, while
taking into account the need to allot resources to other cases.
(3) The comptroller shall seek to give effect to the overriding objective when he—
(a) exercises any power given to him by this Part; or
(b) interprets any rule in this Part.
(4) The parties are required to help the comptroller to further the overriding objective.
Publication of notices
75. The comptroller must advertise in the journal any event to which it is possible to object
under any of the provisions mentioned in Part 2 or 3 of Schedule 3, subject to rule 105(5).
Conduct of hearings
Starting proceedings
76.—(1) Proceedings are started when a person files in duplicate—
(a) the relevant form; and
(b) his statement of grounds.
(2) Any person may give notice of opposition—
(a) in the case of section 75(2), before the end of the period of two weeks beginning with
the date of the relevant notice; and
(b) in the case of any of the other provisions mentioned in Part 2 of Schedule 3, before the
end of the period of four weeks beginning with the date of the relevant notice.
(3) For the purposes of this rule and rule 77—
“relevant form” means—
(a) in relation to applications or requests under the provisions of the Medicinal Products
Regulation or the Plant Protection Products Regulation mentioned in Part 1 of Schedule
3, Patents Form SP3;
(b) in relation to applications, references or requests under any other provision mentioned
in Part 1 of that Schedule, Patents Form 2; and
(c) in relation to oppositions under the provisions mentioned in Part 2 of that Schedule,
Patents Form 15; and
“relevant notice” means the advertisement in the journal mentioned in rule 75.
(4) A statement of grounds must—
(a) include a concise statement of the facts and grounds on which the claimant relies;
(b) in the case of rule 89(5), include the grounds of objection to the draft licence;
(c) where appropriate, include the period or terms of the licence which he believes are
reasonable;
(d) specify the remedy which he seeks;
(e) where it accompanies an application under the Compulsory Licensing Regulation(a),
include any information required by that Regulation;
(f) be verified by a statement of truth; and
(g) comply with the requirements of Part 1 of Schedule 2.
(a) OJ No L 157, 9.6.2006, p1.
37
Notification of the parties
77.—(1) The comptroller must notify the applicant for, or proprietor of, the patent which is the
subject matter of the case that proceedings have started.
(2) In addition, the comptroller may notify any persons who appear to him to be likely to have
an interest in the case that proceedings have started.
(3) But where a person mentioned in paragraph (1) or (2)—
(a) is the claimant; or
(b) has indicated in writing to the comptroller that he supports the claimant’s case,
the comptroller has no duty to notify him.
(4) The comptroller must send the relevant form and the statement of grounds with the
notification under paragraph (1) or (2).
(5) In that notification, the comptroller must specify a period within which the persons notified
may file a counter-statement.
(6) Any counter-statement must be filed in duplicate before the end of the period specified
under paragraph (5).
(7) But paragraphs (5) and (6) do not apply to an opposition under any of the provisions
mentioned in Part 3 of Schedule 3.
(8) In such oppositions, any counter-statement must be filed in duplicate before the end of the
period of four weeks beginning with the date of the relevant notice.
(9) Where—
(a) a person was notified under paragraph (1) or (2); and
(b) that person fails to file a counter-statement under paragraph (6) or (8),
the comptroller shall treat him as supporting the claimant’s case.
(10) The period prescribed for the purposes of giving notice to the comptroller under section
47(6) of opposition to cancellation of an entry made under section 46 that licences are available
as of right is the period prescribed by paragraph (8).
The counter-statement
78.—(1) Any counter-statement filed by the defendant must—
(a) state which of the allegations in the statement of grounds he denies;
(b) state which of the allegations he is unable to admit or deny, but which he requires the
claimant to prove;
(c) state which of the allegations he admits;
(d) be verified by a statement of truth; and
(e) comply with the requirements of Part 1 of Schedule 2.
(2) Where the defendant denies an allegation—
(a) he must state his reasons for doing so; and
(b) if he intends to put forward a different version of events from that given by the
claimant, he must state his own version.
(3) A defendant who fails to deal with an allegation in a counter-statement shall be taken to
admit that allegation.
(4) But a defendant who—
(a) fails to deal with an allegation; but
(b) has set out in his counter-statement the nature of his case in relation to the issue to
which the allegation is relevant,
shall be taken to require the allegation to be proved.
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Copies of documents
79.—(1) Where a relevant statement refers to any other document, a copy of that document must
accompany the relevant statement.
(2) Where more than one copy of a relevant statement is filed, each copy of the statement must
be accompanied by a copy of any document referred to in the statement.
(3) But paragraphs (1) and (2) do not apply where—
(a) the relevant statement is sent to the comptroller; and
(b) the document referred to in the relevant statement was published by the comptroller or
is kept at the Patent Office.
(4) In this rule “relevant statement” means a witness statement, statement of case, affidavit or
statutory declaration.
Evidence rounds and the hearing
80.—(1) When the defendant files a counter-statement, the comptroller must as soon as
practicable—
(a) send the counter-statement to the claimant; and
(b) specify the periods within which evidence may be filed by the claimant and the
defendant.
(2) The comptroller may, at any time he thinks fit, give leave to either party to file evidence
upon such terms as he thinks fit.
(3) Under this rule, evidence shall only be considered to be filed when—
(a) it has been received by the comptroller; and
(b) it has been sent to all the other parties to the proceedings.
(4) The comptroller must then give the parties an opportunity to be heard.
(5) If any party requests to be heard, the comptroller must send to the parties notice of a date
for the hearing.
(6) When the comptroller has decided the matter he must notify all the parties of his decision,
including his reasons for making the decision.
Alteration of time limits
81.—(1) The comptroller may extend or shorten (or further extend or shorten) any period of
time which has been specified under any provision of this Part.
(2) An extension may be granted under paragraph (1) notwithstanding the period of time
specified has expired.
General powers of the comptroller in relation to proceedings before him
82.—(1) Except where the Act or these Rules otherwise provide, the comptroller may give such
directions as to the management of the proceedings as he thinks fit, and in particular he may—
(a) require a document, information or evidence to be filed;
(b) require a translation of a specification of a patent or application or any other document
which is not in English;
(c) require a party or a party’s legal representative to attend a hearing;
(d) hold a hearing and receive evidence by telephone or by using any other method of
direct oral communication;
(e) allow a statement of case to be amended;
(f) stay the whole, or any part, of the proceedings either generally or until a specified date
or event;
39
(g) consolidate proceedings;
(h) direct that part of any proceedings be dealt with as separate proceedings; and
(i) direct that the parties attend a case management conference or pre-hearing review.
(2) The comptroller may control the evidence by giving directions as to—
(a) the issues on which he requires evidence;
(b) the nature of the evidence which he requires to decide those issues; and
(c) the way in which the evidence is to be placed before him,
and the comptroller may use his power under this paragraph to exclude evidence which would
otherwise be admissible.
(3) When the comptroller gives directions under any provision of this Part, he may—
(a) make them subject to conditions; and
(b) specify the consequence of failure to comply with the directions or a condition.
Striking out a statement of case and summary judgment
83.—(1) A party may apply to the comptroller for him to strike out a statement of case or to give
summary judgment.
(2) If it appears to the comptroller that—
(a) the statement of case discloses no reasonable grounds for bringing or defending the
claim;
(b) the statement of case is an abuse of process or is otherwise likely to obstruct the just
disposal of the proceedings; or
(c) there has been a failure to comply with a section, a rule or a previous direction given by
the comptroller,
he may strike out the statement of case.
(3) The comptroller may give summary judgment against a claimant or defendant on the whole
of a case or on a particular issue if—
(a) he considers that—
(i) that claimant has no real prospect of succeeding on the case or issue, or
(ii) that defendant has no real prospect of successfully defending the case or issue; and
(b) there is no other compelling reason why the case or issue should be disposed of at a
hearing.
Hearings in public
84.—(1) Subject to paragraphs (3) and (4), any hearing before the comptroller in proceedings
relating to an application for a patent, or a patent, shall be held in public.
(2) Any party to the proceedings may apply to the comptroller for a hearing to be held in
private.
(3) The comptroller may grant an application under paragraph (2) where—
(a) he considers there is good reason for the hearing to be held in private; and
(b) all the parties to the proceedings have had an opportunity to be heard on the matter,
and where the application is granted the hearing must be held in private.
(4) Any hearing—
(a) of an application under paragraph (2); or
(b) relating to an application for a patent which has not been published,
shall be held in private.
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(5) For the purposes of this rule a reference to a hearing includes any part of a hearing.
Miscellaneous
Security for costs or expenses
85.—(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(a);
(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 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 references to
expenses.
Powers of comptroller to compel attendance of witnesses and production of documents
86. The comptroller shall have the powers of a judge of the High Court (in Scotland, the Court
of Session) as regards—
(a) the attendance of witnesses; and
(b) the discovery and production of documents,
but he shall have no power to punish summarily for contempt.
Evidence in proceedings before the comptroller
87.—(1) Subject to paragraphs (2) to (5), evidence filed under this Part may be given—
(a) by witness statement, statement of case, affidavit, statutory declaration; or
(b) in any other form which would be admissible as evidence in proceedings before the
court.
(2) A witness statement or a statement of case may only be given in evidence if it includes a
statement of truth.
(3) Evidence is to be by witness statement unless the comptroller directs or any enactment
requires otherwise.
(4) A witness statement, affidavit or statutory declaration must comply with the requirements
of Part 1 of Schedule 2, unless the comptroller otherwise directs.
(5) For the purposes of this Part a statement of truth must be dated and signed by—
(a) in the case of a witness statement, the person making the statement; and
(a) 1982 c. 27; section 1(3) was substituted by SI 1990/2591, and then amended by section 2(5) and (6) of the Civil Jurisdiction and Judgments Act 1991 (c. 12) and by SI 2000/1824 and 2001/3929.
41
(b) in any other case, the party or his legal representative.
Proceedings in Scotland
88.—(1) Where there is more than one party to proceedings, a party to the proceedings may
apply to the comptroller to hold proceedings in Scotland.
(2) An application made under paragraph (1) must be granted—
(a) where all the parties consent to the proceedings being held in Scotland; or
(b) where the comptroller considers it appropriate.
(3) A refusal of an application made under paragraph (1) is excepted from the right of appeal
conferred by section 97.
Proceedings started under section 46(3) by a person other than the proprietor
89.—(1) An application by a person other than the proprietor to the comptroller under section
46(3)(a) or (b) must be—
(a) made on Patents Form 2; and
(b) accompanied by two copies of the draft of the licence he proposes should be granted.
(2) The comptroller must notify the proprietor of the patent that an application has been made.
(3) The comptroller must send a copy of the draft licence with the notification.
(4) In the notification, the comptroller must specify a period within which the proprietor may
file a statement of grounds.
(5) The proprietor must file a statement of grounds in accordance with rule 76(4); otherwise he
shall be treated as supporting the applicant’s case.
(6) Proceedings shall continue under this Part as if they had been started under rule 76(1) and
for those purposes the proprietor shall be “the claimant” and the applicant shall be “the
defendant”.
Licences following entitlement proceedings
90.—(1) The period prescribed for the purposes of section 11(3) and (3A) shall be two months
beginning with—
(a) where section 11 is applied by section 12(5), the date on which the order under section
12(1) was made; and
(b) in any other case, the date on which the order under section 8 was made.
(2) The period prescribed for the purposes of section 38(3) shall be two months beginning with
the date on which the order mentioned in section 38(2) was made.
Period prescribed for applications by employee for compensation
91.—(1) The period prescribed for the purposes of section 40(1) and (2) shall be the period
beginning with the date of grant of the patent and ending one year after the patent ceased to have
effect.
(2) But if an application for restoration is made under section 28 and—
(a) the application is granted, the period prescribed under paragraph (1) shall continue as if
the patent had remained continuously in effect; or
(b) the application is refused, the period prescribed for the purposes of section 40(1) and
(2) shall be—
(i) the period prescribed under paragraph (1), or
(ii) if it expires later, the period of six months beginning with the date on which the
application was refused.
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PART 8
OPINIONS
Interpretation
Interpretation
92. In this Part—
“request” means, unless the context otherwise requires, a request for an opinion under section
74A(a);
“requester” means the person who makes that request;
“patent in suit” means the patent to which that request relates;
“patent holder” means the proprietor of that patent and any exclusive licensee of the patent;
and
“relevant proceedings” means proceedings (whether pending or concluded) before the
comptroller, the court or the European Patent Office.
Request for opinion
Request for an opinion under section 74A
93.—(1) A request must be made on Patents Form 17 and must 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 must 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 relevant proceedings of which the requester is aware which relate to
the patent in suit 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
document which has been published by the comptroller or is kept at the Patent Office) which is
referred to in the statement.
(5) Each such statement, evidence or other document must be provided in duplicate.
Refusal or withdrawal of request
94.—(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 relevant 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) 1977 c.37; section 74A was inserted by the Patents Act 2004 (c.16), section 13.
43
(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
95.—(1) The comptroller must notify each of 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 in suit which has been registered
under rule 47;
(c) any person who has made a request in respect of the patent in suit under rule 54
regarding an opinion being requested under rule 93;
(d) any person who is specified under rule 93(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 must send a copy of the form and statement filed under rule 93(1) to each
person so notified, together with a copy of such other documents filed under rule 93 as he thinks
fit.
(4) The comptroller must advertise a request in such manner as he thinks fit.
(5) However, if the request is refused or withdrawn before a notification has been made under
paragraph (1)—
(a) the patent holder alone must 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
96.—(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) must 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, during the period of two
weeks beginning immediately after the end of the relevant period, file observations confined
strictly to matters in reply.
(5) Any person who files observations under paragraph (4) must 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 four weeks beginning with the date of
advertisement under rule 95(4).
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Issue of the opinion
97.—(1) After the end of the procedure under rule 96, the comptroller must refer the request to
an examiner for the preparation of the opinion.
(2) The comptroller must issue the opinion that has been prepared by sending a copy to—
(a) the requester;
(b) the patent holder; and
(c) any other person who filed observations under rule 96(1).
Review of opinion
Review of opinion
98.—(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 relevant proceedings.
(3) The application must be made on Patents Form 2 and be accompanied by a copy and a
statement in duplicate setting out the grounds on which the review is sought.
(4) The statement must contain particulars of any relevant 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 in suit was invalid, or was invalid to
a limited extent; or
(b) that, by reason of its interpretation of the specification of the patent in suit, the opinion
wrongly concluded that a particular act did not or would not constitute an infringement
of the patent.
Procedure on review
99.—(1) On receipt of the application, the comptroller must send a copy of the form and
statement filed under rule 98 to—
(a) the requester (if different from the applicant); and
(b) any person who filed observations under rule 96.
(2) The comptroller must advertise the application in such manner as he thinks 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 for a review.
(4) For the purposes of paragraph (3) the relevant period is—
(a) four weeks beginning with the date on which the application is advertised under
paragraph (2); or
(b) if it expires later, the period of two months beginning with the date on which the
opinion is issued under rule 97(2).
(5) The comptroller shall send to the other parties a copy of each statement or counter-
statement filed under paragraph (3).
(6) The rules listed in Parts 4 and 5 of Schedule 3 shall apply to the proceedings for a review
and for the purposes of rule 83(3)—
(a) a reference to “the claimant” is a reference to the applicant for a review; and
(b) a reference to “the defendant” is a reference to any other party.
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Outcome of review
100.—(1) On completion of the proceedings under rule 99 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 any proceedings from
raising any issue regarding the validity or the infringement of the patent.
(3) No appeal under section 97 shall lie from a decision to set aside the opinion under
paragraph (1)(a), except where the appeal relates to a part of the opinion that is not set aside.
PART 9
MISCELLANEOUS
Agents and advisers
Agents
101.—(1) Any act required or authorised by the Act or these Rules to be done by or to any
person in connection with an application for a patent, or any procedure relating to a patent, may be
done by or to an agent authorised by that person orally or in writing—
(a) where an agent is appointed when a person starts or joins any proceeding under the Act,
once the comptroller has been notified of his appointment in writing; or
(b) where an agent is appointed after a person has started or joined any proceeding under
the Act, once Patents Form 51 has been filed in duplicate.
(2) Where an agent has been authorised under paragraph (1), the comptroller may, in any
particular case, require the signature or presence of his principal.
Appointing advisers
102. The comptroller may appoint an adviser to assist him in any proceeding before him and
shall settle any question or instructions to be given to the adviser.
Address for service
Address for service
103.—(1) For the purposes of any proceeding under the Act or these Rules, an address for
service must be furnished by—
(a) an applicant for the grant of a patent;
(b) a person who makes any other application, reference or request or gives any notice of
opposition under the Act; and
(c) any person opposing such an application, reference, request or notice.
(2) The proprietor of a patent, or any person who has registered any right in or under a patent
or application, may furnish an address for service by notifying the comptroller.
(3) Where a person has furnished 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 furnished under this Rule shall be an address in the United
Kingdom, another EEA State or the Channel Islands.
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Failure to furnish an address for service
104.—(1) Where—
(a) a person has failed to furnish an address for service under rule 103(1); and
(b) the comptroller has sufficient information enabling him to contact that person,
the comptroller shall direct that person to furnish an address for service.
(2) Where a direction has been given under paragraph (1), the person directed shall, before the
end of the period of two months beginning with the date of the direction, furnish 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 had insufficient information to give a direction under paragraph (1),
and the person has failed to furnish 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;
(b) in the case of a person mentioned in rule 103(1)(b), his application, reference, request
or notice of opposition shall be treated as withdrawn; and
(c) in the case of a person mentioned in rule 103(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 103(4).
Corrections and remission of fees
Correction of errors
105.—(1) A request to the comptroller to correct an error or mistake under section 117 must be
made in writing and identify the proposed correction.
(2) The comptroller may, if he thinks fit, require the person requesting a correction to produce
a copy of the document indicating the correction.
(3) Where the request is to correct a specification of a patent or application, the request shall
not be granted unless the correction is obvious (meaning that it is immediately evident that
nothing else could have been intended in the original specification).
(4) But paragraph (3) does not apply where the error in the specification of the patent or
application is connected to the delivery of the application in electronic form or using electronic
communications.
(5) Where the comptroller determines that no person could reasonably object to the correction
no advertisement shall be published under rule 75.
(6) Where the comptroller is required to publish a notice under section 117(3), it must be
published in the journal.
(7) This rule does not apply to a correction of a name, address or address for service (which
may be corrected under rule 49).
Remission of fees
106.—(1) A person may apply to the comptroller for the remission of a fee.
(2) The comptroller may remit the whole or part of a search fee where—
47
(a) in relation to an international application for a patent (UK), a copy of the International
Search Report (as defined in rule 64) for that application is available to the comptroller;
or
(b) a new application for a patent is filed as mentioned in section 15(9) and, in connection
with the earlier application, the applicant has already paid the search fee for the
invention described in the new application.
(3) The comptroller may remit the whole or part of any fee where—
(a) a person has requested the comptroller or an examiner to do something in accordance
with the Act or these Rules; and
(b) the request is withdrawn before it is carried out.
(4) 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.
(5) Where a supplementary protection certificate lapses or is declared invalid, the comptroller
must remit any fee which has been paid in respect of the relevant period.
(6) In paragraph (5) “the relevant period” is the period—
(a) beginning with the next anniversary of the start date following the date the certificate
lapsed or was declared invalid; and
(b) ending with the date the certificate would have expired but for its lapse or invalidity.
(7) Any decision of the comptroller under this rule is excepted from the right of appeal
conferred by section 97.
Correction of irregularities
107.—(1) Subject to paragraph (3), the comptroller may, if he thinks fit, authorise the
rectification of any irregularity of procedure connected with any proceeding or other matter before
the comptroller, an examiner or the Patent Office.
(2) Any rectification made under paragraph (1) shall be made—
(a) after giving the parties such notice; and
(b) subject to such conditions,
as the comptroller may direct.
(3) A period of time specified in the Act or listed in Parts 1 to 3 of Schedule 4 (whether it has
already expired or not) may be extended under paragraph (1) if, and only if—
(a) the irregularity or prospective irregularity is attributable, wholly or in part, to a default,
omission or other error by the comptroller, an examiner or the Patent Office; and
(b) it appears to the comptroller that the irregularity should be rectified.
Time limits and delays
Extension of time limits
108.—(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 provisions listed in Parts 1 and 2 of
Schedule 4.
(2) The comptroller shall extend, by a period of two months, any period of time prescribed by
the provisions listed in Part 2 of Schedule 4 where—
(a) a request is filed on Patents Form 52;
(b) no previous request has been made under this paragraph; and
(c) that request is filed before the end of the period of two months beginning with the date
on which the relevant period of time expired.
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(3) The comptroller may, if he thinks fit, extend or further extend any period of time
prescribed by the rules listed in Part 2 of Schedule 4 where—
(a) a request is filed on Patents Form 52; and
(b) the person making the request has furnished evidence supporting the grounds of the
request, except where the comptroller otherwise directs.
(4) Each request under paragraph (2) or (3) for a period of time to be extended must be made
on a separate form unless—
(a) each of those requests relate to the same patent or application for a patent; and
(b) the grant of each of those requests would result in the expiry of all the extended periods
of time on the same date,
in which case those requests may be combined and made on a single form.
(5) Any extension made under paragraph (1) or (3) 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 3
of Schedule 4 may be extended (or further extended) for a period of two months only.
(6) An extension may be granted under paragraph (1) or (3) notwithstanding the period of time
prescribed by the relevant rule has expired.
(7) But no extension may be granted in relation to the periods of time prescribed by the rules
listed in Part 3 of Schedule 4 after the end of the period of two months beginning immediately
after the period of time as prescribed (or previously extended) has expired.
Extension of time limits specified by comptroller
109.—(1) A request under section 117B(2) must be—
(a) made 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) is two months beginning
immediately after the expiry of the period to which section 117B(2) applies.
Interrupted days
110.—(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) Any certificate of the comptroller given under paragraph (1) shall be displayed in the
Patent Office and advertised in the journal.
(3) The comptroller shall, where the time for doing anything under the Act expires on an
interrupted day, extend that time to the next following day not being an interrupted day (or an
excluded day).
(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).
49
Delays in communication services
111.—(1) The comptroller shall extend any period of time specified in the Act or these Rules
where he is satisfied that the 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 made—
(a) 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, electronic communications, and courier.
Copies available to the comptroller
Copies available to the comptroller
112.—(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 available to the
comptroller.
(2) Where this rule applies the comptroller shall make a copy (or further copy) of that
application and certify it accordingly.
Translations
Translations
113.—(1) Where any document filed at the Patent Office, or sent to the comptroller, is in a
language other than English or Welsh it must be accompanied by a translation into English of that
document.
(2) But paragraph (1) does not apply to the following documents—
(a) where the documents filed to initiate an application for a patent include something
which is or appears to be a description of the invention, the document containing that
thing;
(b) a priority application;
(c) a copy of an application provided under section 15(10)(b)(ii);
(d) a copy of a specification of a European patent (UK) filed in connection with an
application by the proprietor to amend the specification;
(e) a copy of an application for a European patent (UK) provided under section
81(2)(b)(ii);
(f) an international application for a patent (UK), where a translation of the application or
an amendment to it is a necessary translation;
(g) a document referred to in paragraph (5).
(3) Where more than one copy of the document mentioned in paragraph (1) is filed or sent, a
corresponding number of translations shall accompany it.
(4) Where a document to which paragraph (1) applies is not accompanied by a translation, the
comptroller may, if he thinks fit, take no further action in relation to that document.
(5) In relation to an international application for a patent (UK), where any document which is
in a language other than English or Welsh is—
(a) referred to in an International Search Report or International Preliminary Report on
Patentability; or
50
(b) cited in an International Preliminary Examination Report,
and the relevant report is filed at the Patent Office, the comptroller may direct that a translation
into English of that document be filed.
(6) Where a direction is given under paragraph (5) a translation of that document must be filed
before the end of the period of two months beginning with the date on which the direction is
given; otherwise the comptroller may, if he thinks fit, take no further action in relation to the
application.
(7) Subject to rule 82(1)(b), where a patent application or any document related to such
application is filed at the Patent Office or sent to the comptroller in Welsh, and is not
accompanied by a translation into English, the comptroller must obtain such a translation.
(8) In this rule a reference to a document includes a reference to a part of a document; and in
paragraph (5) “International Preliminary Examination Report”, “International Preliminary Report
on Patentability” and “International Search Report” and have the same meaning as in rule 64.
Translations in proceedings in relation to a European patent (UK)
114.—(1) Where—
(a) proceedings are started before the comptroller in relation to a European patent (UK);
and
(b) the specification of that patent was published in French or German,
the person who starts those proceedings shall file at the Patent Office a translation into English of
the specification.
(2) But paragraph (1) shall not apply where—
(a) a translation into English of the specification has been filed under section 77(6); or
(b) the comptroller directs that a translation is unnecessary.
(3) Where, in the course of such proceedings, leave is given to amend the specification of the
patent, the proprietor shall file at the Patent Office a translation of the amendment into the
language in which the specification of the patent was published.
(4) This rule applies to making a request for an opinion under section 74A as it applies to
proceedings started before the comptroller.
Establishing the accuracy of translations
115. 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.
Supplementary Protection Certificates
Supplementary protection certificates
116.—(1) An application for—
(a) a supplementary protection certificate shall be made on Patents Form SP1; and
(b) an extension of the duration of a supplementary protection certificate under Article 8 of
the Medicinal Products Regulation shall be made on Patents Form SP4.
(2) The period prescribed for the purposes of paragraph 5(a) of Schedule 4A to the Act is—
51
(a) three months ending with the start date; or
(b) where the certificate is granted after the beginning of that period, three months
beginning with the date the supplementary protection certificate is granted.
(3) The comptroller must send a notice to the applicant for the certificate—
(a) before the beginning of the period of two months immediately preceding the start date;
or
(b) where the certificate is granted as mentioned in paragraph (2)(b), on the date the
certificate is granted.
(4) The notice must notify the applicant for the certificate of—
(a) the fact that payment is required for the certificate to take effect;
(b) the prescribed fee due;
(c) the date before which payment must be made; and
(d) the start date.
(5) The prescribed fee must be accompanied by Patents Form SP2; and once the certificate has
taken effect no further fee may be paid to extend the term of the certificate unless an application
for an extension of the duration of the certificate is made under the Medicinal Products
Regulation.
(6) Where the prescribed fee is not paid before the end of the period prescribed for the
purposes of paragraph 5(a) of Schedule 4A to the Act, the comptroller shall, before the end of the
period of six weeks beginning immediately after the end of that prescribed period, and if the fee
remains unpaid, send a notice to the applicant for the certificate.
(7) The notice shall remind the applicant for the certificate—
(a) that payment is overdue; and
(b) of the consequences of non-payment.
(8) The comptroller must send the notices under this rule to—
(a) the applicant’s address for service; and
(b) the address to which a renewal notice would be sent to the proprietor of the basic patent
under rule 39(3).
Publications
The journal
117. The comptroller must publish a journal containing—
(a) particulars of applications for and grants of patents and of other proceedings under the
Act;
(b) any directions given under section 120(1) specifying hours of business or excluded
days;
(c) any directions under section 123(2A) setting out forms; and
(d) any other information that the comptroller considers to be generally useful or important.
Reports of cases
118. The comptroller must make arrangements for the publication of—
(a) reports of cases relating to patents, trade marks, registered designs or design right
decided by him; and
(b) reports of 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).
52
Publication and sale of documents
119. The comptroller may arrange for the publication and sale of copies of documents (in
particular, specifications of patents and applications for patents) in the Patent Office.
Transitional provisions and revocations
Transitional provisions and revocations
120.—(1) Schedule 5 (transitional provisions) shall have effect.
(2) The instruments set out in Schedule 6 (revocations) shall be revoked to the extent specified.
53
SCHEDULE 1 Rule 13(1)
BIOLOGICAL MATERIAL
Introductory
1. In this Schedule—
“authorisation certificate” means a certificate issued by the comptroller authorising a
depositary institution to make available a sample of biological material;
“Budapest Treaty” means the Treaty on the International Recognition of the Deposit of Micro-
organisms for the purposes of Patent Procedure signed at Budapest on 28th April 1977, as
amended on 26th September 1980, and includes references to the regulations made under that
Treaty;
“depositary institution” means an institution which—
(a) carries out the functions of receiving, accepting and storing biological material and the
furnishing of samples of such biological material (whether generally or of a specific
type); and
(b) conducts its affairs, in so far as they relate to the carrying out of those functions, in an
objective and impartial manner;
“expert” means independent expert;
“first requirement” means the first requirement in paragraph 3;
“international depositary authority” means a depositary institution which has acquired the
status of international depositary authority as provided in the Budapest Treaty; and
“second requirement” means the second requirement in paragraph 3.
Specification of an application for a patent, or of a patent, for an invention which involves
the use of or concerns biological material
2.—(1) This paragraph applies where the specification of an application for a patent, or of a
patent, for an invention which involves the use of or concerns biological material does not disclose
the invention in a manner which is clear enough and complete enough for the invention to be
performed by a person skilled in the art.
(2) Where this paragraph applies, the specification is to be treated as disclosing the invention
in a manner which is clear enough and complete enough for the invention to be performed by a
person skilled in the art, if—
(a) the first requirement and the second requirement are satisfied; and
(b) the specification of the application as filed contains such relevant information as is
available to the applicant on the characteristics of the biological material.
The first and second requirements
3.—(1) The first requirement is that—
(a) on or before the date of filing of the application, the biological material has been
deposited in a depositary institution; and
(b) that institution will be able to furnish subsequently a sample of the biological material.
(2) The second requirement is that before the end of the relevant period—
(a) the name of the depositary institution and the accession number of the deposit are
included in the specification; and
54
(b) where the biological material was deposited by a person other than the applicant (“the
depositor”)—
(i) a statement is filed which identifies the name and address of the depositor, and
(ii) a statement by the depositor has been filed, which authorises the applicant to refer to
the biological material in his application and irrevocably authorises the making
available to the public of the biological material in accordance with this Schedule.
(3) The relevant period is the first to expire of—
(a) the period of sixteen months—
(i) where there is no declared priority date, beginning with the date of filing of the
application; or
(ii) where there is a declared priority date, beginning with that date;
(b) where the applicant has made a request under section 16(1) to publish the application
during the period prescribed for the purposes of that section, the period ending with the
date of the request; or
(c) where the applicant was notified under rule 52(2), the period of one month beginning
with the date of the notification.
(4) Where—
(a) the application is filed with the European Patent Office and documents have been filed
under the provisions of the European Patent Convention corresponding to sub-
paragraph (2); or
(b) the application in suit is an international application for a patent (UK) and documents
have been filed in accordance with the Patent Co-operation Treaty under the provisions
of the Treaty corresponding to sub-paragraph (2),
the second requirement shall be treated as having been met.
(5) In this paragraph—
“accession number” means the number given to the deposit by a depositary institution;
“specification” means the specification of an application for a patent.
A request by a person for biological material to be made available
4.—(1) This paragraph applies when paragraph 7 does not apply.
(2) Where an application for a patent has been published, any person may request the
comptroller to issue an authorisation certificate.
(3) Where the application has not been published, a person who has been notified in
accordance with section 118(4) may request the comptroller to issue an authorisation certificate.
(4) A request must be made on Patents Form 8.
(5) Where the biological material has been deposited at an international depositary authority,
the request must be accompanied by the relevant form required by the Budapest Treaty.
(6) Where the comptroller grants the request, he must send copies of the request and the
certificate (and any form required by the Budapest Treaty) to—
(a) the applicant for, or the proprietor of, the patent;
(b) the depositary institution; and
(c) the person making the request.
The undertaking
5.—(1) A request made under paragraph 4 or 7 shall include an undertaking by the person
making the request—
55
(a) not to make the biological material, or any material derived from it, available to any
other person; and
(b) not to use the biological material, or any material derived from it, except for
experimental purposes relating to the subject matter of the invention,
subject to the following sub-paragraphs.
(2) The applicant for, or the proprietor of, a patent may agree to limit the effect of the
undertaking in a particular case.
(3) The undertaking shall cease to have effect—
(a) when the application for a patent is terminated or withdrawn (but it will continue to
have effect if the application is reinstated or resuscitated); or
(b) when the patent ceases to have effect.
(4) Where a request is made—
(a) by a government department or any person authorised in writing by a government
department; and
(b) for the purposes of using the patented invention for the services of the Crown,
no undertaking is required and any undertaking by the government department or the person so
authorised shall not have effect.
(5) Where—
(a) a licence under the patent to which the undertaking relates is available as of right; or
(b) a compulsory licence in respect of the patent to which the undertaking relates has been
granted,
any undertaking made shall have no effect to the extent necessary to give effect to any such
licence.
Restriction of availability of biological material to experts
6.—(1) Where the first or the second condition is met (except in relation to Crown use),
paragraph 7 applies until the end of the relevant period.
(2) The first condition is—
(a) the applicant requests on Patents Form 8A that a sample of the biological material
should only be made available to an expert; and
(b) that request is made before the preparations for the application’s publication have been
completed by the Patent Office.
(3) The second condition is that, in relation to an international application for a patent (UK),
the applicant made a reference to the deposited biological material in accordance with the Patent
Co-operation Treaty.
(4) Where the first condition is met, the comptroller shall, when he publishes the application,
include a notice that the provisions of paragraph 7 apply.
(5) In paragraph 6(1) “the relevant period” is—
(a) where the patent is granted, the period ending with the date on which the patent was
granted; and
(b) where the application is terminated or withdrawn, twenty years beginning with the date
of filing.
(6) Nothing in this or the following paragraph affects the rights under section 55 of any
government department or any person authorised in writing by a government department.
Request for a sample to be made available to expert
7.—(1) A request for a sample to be made available to an expert must be made on Patents Form
8 and must include details of the expert.
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(2) Where the biological material has been deposited at an international depositary authority,
the request must be accompanied by any form required by the Budapest Treaty.
(3) The comptroller must send a copy of Patents Form 8 to the applicant for the patent.
(4) Before the end of the period of one month beginning with the date on which a copy of
Patents Form 8 is sent by the comptroller, the applicant may give notice of his objection to the
particular expert, and where he objects the comptroller shall determine the matter.
(5) Where—
(a) the applicant does not object to the sample being made available; or
(b) following an objection, the comptroller decides that the sample should be made
available to the particular expert,
the comptroller must issue a certificate authorising the release of a sample to the expert.
(6) A copy of Patents Form 8 (and any form required by the Budapest Treaty) and any
certificate issued under sub-paragraph (5) must be sent to—
(a) the applicant for the patent;
(b) the depository institution where the sample of the biological material is stored;
(c) the expert; and
(d) the person who made the request.
New deposits
8.—(1) This paragraph applies where the first, second or third circumstance occurs.
(2) The first circumstance is that the biological material ceases to be available at the depositary
institution because it is no longer viable.
(3) The second circumstance is that—
(a) the depositary institution is, for any other reason, unable to supply the biological
material; or
(b) the place where the biological material is deposited is no longer a depositary institution
for that type of material (whether temporarily or permanently).
(4) The third circumstance is that the biological material is transferred to a different depositary
institution.
(5) The first requirement and the second requirement shall be treated as having been complied
with throughout the relevant period, if and only if—
(a) where the first or second circumstance occurs—
(i) a new deposit of biological material is made at the relevant depositary before the end
of the relevant period, and
(ii) that deposit is accompanied by a statement, signed by the person making the deposit,
that the biological material deposited is the same as that originally deposited; and
(b) in all circumstances, the applicant or proprietor, before the end of the relevant period,
applies to the comptroller to amend the specification of the application for the patent, or
the patent, so that it meets the second requirement.
(6) For the purposes of paragraph (5) “the relevant period” is the period beginning when the
first, second or third circumstance occurs and ending—
(a) three months after the date on which the depositor is notified by the depositary
institution that the first, second or third circumstance occurred; or
(b) where it expires later, three months after the date on which that circumstance is
advertised in the journal.
(7) The relevant depositary is—
(a) where only the first circumstance occurs, the depositary institution where the original
deposit was made; or
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(b) in any other case, any depositary institution.
58
SCHEDULE 2 Rule 14
FORMAL AND OTHER REQUIREMENTS
PART 1
REQUIREMENTS: ALL DOCUMENTS
1. A4 matt white paper must be used.
2. A document in paper form must be free from tears, folds or similar damage and its contents
must be suitable for reproduction.
3. Frames (lines surrounding matter) must not be used.
PART 2
REQUIREMENTS: DOCUMENTS (OTHER THAN DRAWINGS)
4. The pages of the description and claims must be numbered consecutively in a single series.
5. But where a sequence listing is set out at the end of the application, it must be numbered
consecutively in a separate series.
6. Page numbers must be located at the top or bottom of the page (but not in the margin) in the
centre.
7. The minimum margins in any document must be 20mm.
8. Each of the following—
(a) the request for the grant of a patent;
(b) the description;
(c) the claims;
(d) the abstract,
must begin on a new sheet of paper.
9. The abstract, description and claims must use at least 1.5 line spacing, except where they
form part of a translation or a sequence listing.
10. The capital letters in any typeface or font used must be more than 2mm high.
PART 3
REQUIREMENTS: DRAWINGS
11. There must be a margin around any drawing which must be at least—
(a) at the top and left side, 20mm;
(b) at the right side, 15mm; and
(c) at the bottom, 10mm.
12. All drawings must be numbered consecutively in a single series.
13. The drawings must begin on a new sheet of paper.
59
14. The pages containing the drawings must be numbered consecutively in a single series.
15. Drawings must comprise black lines and must not be shaded.
16. Drawings may include cross-hatching to illustrate the cross-sections of a thing.
17. Any scale or other reference for making measurement must be represented
diagrammatically.
18. Any drawing must be produced in such manner that it would still be clear if it were reduced
by linear reduction to two thirds of its original size.
19. A drawing must not be included in the description, the claims, the abstract or the request for
the grant of a patent.
20. The capital letters in any typeface or font used in any drawing must be more than 3mm high.
PART 4
OTHER REQUIREMENTS
21. References must only be included in the drawing where they are mentioned in either the
description or the claims.
22. Tables of information may only be included in the claims if the comptroller agrees.
23. The terminology and any references used must be consistent throughout the application for a
patent.
24. Where units of measurement used in the application are not standard international units of
measurement, the equivalent standard international units of measurement must be provided, and
where no international standard exists, units must be used which are generally accepted in the
field.
25. Only technical terms, signs and symbols which are generally accepted in the field may be
used.
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SCHEDULE 3 Rule 73
PROCEEDINGS HEARD BEFORE THE COMPTROLLER
PART 1
APPLICATIONS, REFERENCES AND REQUESTS
Patents Act 1977
section 8(1) (reference regarding entitlement in relation to a patent under the Act)
section 10 (request for directions for handling a joint application)
section 11(5) (reference regarding entitlement to a licence to continue working after
transfer of application)
section 12(1) (reference regarding entitlement in relation to a foreign or convention
patent)
section 12(4) (reference involving joint applications on entitlement in relation to a foreign
or convention patent)
section 13(3) (application to comptroller to remove person mentioned as inventor)
section 37(1) (determination of right to patent after grant)
section 38(5) (reference regarding entitlement to a licence to continue working after
transfer of patent)
section 40 (application for compensation by an employee)
section 41(8) (application to vary order for compensation for certain inventions)
section 46(3) (application to settle terms of licence available as of right)
section 47(3) (application to cancel licence available as of right)
section 48(1) (application for a compulsory licence)
section 50A(2) (application following merger and market investigation)
section 51(1) (application by Minister following report of Competition Commission)
section 52(2)(a) (application to cancel compulsory licence)
section 61(3) (reference on question of infringement before the comptroller)
section 71 (declaration of non-infringement)
section 72 (application to revoke patent)
Patents Rules 2007
rule 10(2) (application to be mentioned as inventor)
rule 88(1) (application to hold proceedings in Scotland)
paragraph 7(4) of Schedule 1 (notice of objection to expert)
Compulsory Licensing Regulation
Article 5(c) of the Compulsory Licensing Regulation (application to terminate EU
compulsory licence)
Article 6(1) of that Regulation (application for an EU compulsory licence)
Article 10(8) of that Regulation (application to access books and records)
Article 16(1), second paragraph, of that Regulation (application for a review of an EU
compulsory licence)
Article 16(4) of that Regulation (application for modification of an EU compulsory
licence)
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Medicinal Products Regulation and Plant Protection Products Regulation
Article 14(d) of the Medicinal Products Regulation and the Plant Protection Products
Regulation (request to review lapse of supplementary protection certificate)
Article 15 of those Regulations (application for declaration of invalidity of supplementary
protection certificate)
Article 15a of the Medicinal Products Regulation (application for revocation of an
extension of the duration of a supplementary protection certificate)
PART 2
OPPOSITIONS WHICH START PROCEEDINGS
Patents Act 1977
section 27(5) (opposition to amendment of specification after grant)
section 29(2) (opposition to surrender of patent)
section 47(6) (opposition to cancellation of licence available as of right), where the
application was made by the proprietor of the patent
section 75(2) (opposition to amendment during infringement or revocation proceedings)
section 117(2) (opposition to correction of error in patents and applications)
PART 3
OPPOSITIONS AFTER PROCEEDINGS HAVE STARTED
Patents Act 1977
section 47(6) (opposition to cancellation of licence available as of right), where the
application was made by a person other than the proprietor of the patent
section 52(1) (opposition to an application for compulsory licence or under section 50A
or 51)
section 52(2)(b) (opposition to an application to cancel a compulsory licence)
PART 4
RULES WHICH APPLY TO ANY PROCEEDINGS HEARD BEFORE THE
COMPTROLLER
Patents Rules 2007
rule 74 (overriding objective)
rule 79 (copies of documents)
rule 80(2) to (6) (evidence and the hearing)
rule 81 (alteration of time limits)
rule 82 (general powers of the comptroller in relation to proceedings before him)
rule 84 (hearings in public)
rule 87 (evidence in proceedings before the comptroller)
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PART 5
RULES WHICH APPLY TO A REVIEW OF AN OPINION
Patents Rules 2007
rule 83 (striking out a statement of case and summary judgment)
rule 85 (security for costs or expenses)
rule 86 (powers of comptroller to compel attendance of witness and production of
documents)
rule 88 (proceedings in Scotland)
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SCHEDULE 4 Rule 108
EXTENSION OF TIME LIMITS
PART 1
PERIODS OF TIME THAT CANNOT BE EXTENDED
rule 6(2)(b) (declaration of priority for the purposes of section 5(2) made after the date of
filing)
rule 7(1) (period for making a request to the comptroller for permission to make a late
declaration of priority)
rule 32(1) (application to reinstate a terminated application)
rule 37 and 38 (renewal of patents)
rule 40(1) (application to restore a lapsed patent)
rule 43(4) (application to cancel entry that licence available as of right)
rule 58(3) (request for a direction under section 81)
rule 59(1) (request from a foreign industrial property office for a direction under section
81)
rule 66(3) (period for making a request to the comptroller for permission to make a late
declaration of priority in respect of an international application for a patent (UK))
rule 76(2) (notice of opposition), except in relation to an opposition under section 27(5)
where there are pending before the court or the comptroller proceedings in which the
validity of the patent is put in issue
rule 77(8) and (10) (opposition periods)
rule 104(2) (period for filing an address for service), in relation to an application for a
patent
rule 109 (extension of time limits specified by comptroller)
rule 116(2) (fee for supplementary protection certificate)
paragraph 8(5) of Schedule 1 (new deposits of biological material)
PART 2
PERIODS OF TIME THAT MAY BE EXTENDED UNDER RULE 108(2) OR
108(3)
rule 8(1) and (2) (filing of information and priority documents)
rule 10(3) (filing of statement of inventorship and the right to be granted a patent)
rule 18(1) (missing parts)
rule 21 (extensions for new applications)
rule 22(1), (2) and (5) (periods prescribed for the purposes of sections 15(10) and 17(1))
rule 28(2), (3) and (5) (request for substantive examination)
rule 30 (period for putting an application in order)
rule 56(6) and (7) (filing of a translation of European patent (UK) specifications)
rule 58(4) (request under section 81(2)(b)(i))
rule 59(3) (request under section 81(2)(b)(ii))
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rule 60 (request for substantive examination following a direction under section 81)
rule 66(1) and (2) (international applications for patents: entry into national phase)
rule 68 (international applications for patents: altered prescribed periods)
paragraph 3(2) of Schedule 1 (filing of information in relation to the deposit of biological
matter)
PART 3
PERIODS OF TIME TO WHICH RULE 108(5) AND 108(7) RELATE
rule 10(3) (filing of statement of inventorship and the right to be granted a patent)
rule 12(3) and (9) (filing of name and address and translations)
rule 19 (new applications filed as mentioned in section 15(9))
rule 21(1)(a) and (2)(a) (extensions for new applications)
rule 22 (periods prescribed for the purposes of sections 15(10) and 17(1))
rule 28 (request for substantive examination)
rule 30 (period for putting application in order)
rule 58(4) (request under section 81(2)(b)(i))
rule 59(3) (request under section 81(2)(b)(ii))
rule 60 (request for substantive examination following a direction under section 81)
rule 66(1) and (2) (international applications for patents: entry into national phase)
rule 68 (international applications for patents: altered prescribed periods)
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SCHEDULE 5 Rule 120(1)
TRANSITIONAL PROVISIONS
Interpretation
1. In this Schedule, the “1995 Rules” means the Patents Rules 1995(a) as they had effect
immediately prior to their revocation by these Rules.
Periods of time
2. Where, in relation to any proceedings under the Act, a period of time prescribed by the 1995
Rules for the purposes of a particular provision of the Act has not expired before the date on
which these Rules come into force, that period continues to apply.
Proceedings before the comptroller
3. Proceedings before the comptroller which commenced before these Rules came into force
shall continue in accordance with Part 7 of these Rules, subject to paragraph 2 of this Schedule.
Service by post
4. Any document sent to the comptroller by posting it in the United Kingdom before the day
these Rules come into force shall be deemed to have been filed at the time when it would be
delivered in the ordinary course of post.
Applications to which certain amendments made to the Act by the Regulatory Reform
(Patents) Order 2004 do not apply.
5.—(1) This paragraph applies to an application for a patent to which article 20, 21 or 22 of the
Regulatory Reform (Patents) Order 2004(b) applies.
(2) Any reference in these Rules to—
(a) section 15(9) of the Act is a reference to section 15(4) of the unamended Act;
(b) section 15(10)(a) of the Act is a reference to section 15(5)(a) of the unamended Act;
(c) section 15(10)(b) or (c) of the Act shall be disregarded;
(d) section 15(10)(d) of the Act is a reference to section 15(5)(b) of the unamended Act;
(e) section 15A of the Act is a reference to section 17(1) of the unamended Act;
(f) section 17(1)(c)(i) of the Act is a reference to section 17(1)(a) of the unamended Act;
and
(g) Patents Form 9A is a reference to Patents Form 9.
(3) The following provisions do not apply—
rule 6(2) and (3) (declaration of priority made after date of filing);
rule 7 (permission to make late declaration under section 5(2B));
rule 12(2), (3), (8) and (9) (notifications of deficiencies in application);
rule 17 (references under section 15(1)(c)(ii));
rule 18 (missing parts);
rule 22(3) (prescribed period for the purpose of section 15(10)(b)(ii)).
(a) SI 1995/2093; as amended by SI 1999/1092, 1999/1899, 1999/3197, 2001/1412, 2002/529, 2003/513, 2004/2177 (C. 94), 2004/2358, 2004/3205 (C. 140), 2005/2496, 2006/760 and 2007/677.
(b) SI 2004/2357.
66
(4) In this paragraph “unamended Act” means the Act as it had effect immediately before the
Regulatory Reform (Patents) Order 2004 came into effect.
Security for costs
6. Rule 85 does not apply in respect of proceedings started before 1st October 2005.
Patent applications filed before 7th January 1991
7.—(1) This paragraph applies to an application for a patent filed before 7th January 1991(a)
and to a patent granted in pursuance of such application.
(2) Schedule 1 has effect with the following modifications.
(3) In paragraph 2, for the words “involves the use of or concerns biological material”
substitute the words “requires for its performance the use of a micro-organism”.
(4) In paragraph 5(3)(b), insert at the beginning the words “in the case of an undertaking given
in accordance with paragraph 1(a),” and insert at the end the word “or” followed by:
“(c) in the case of an undertaking given in accordance with paragraph (1)(b), when the
patent is granted.”.
(5) Any reference to “biological material”—
(a) in paragraphs 3(1)(a), 4, 5 and 8 is a reference to “culture of the micro-organism”; and
(b) other than in those provisions, is a reference to “micro-organism”.
(6) For the purposes of paragraph 3(2) the relevant period is the period of two months
beginning with the date of filing of the application for a patent.
(7) The following provisions do not have effect—
paragraph 3(3) (defining relevant period);
paragraph 6 (restriction of availability of biological material to experts);
paragraph 7 (request for sample to be made available to expert).
Patent applications filed between 7th January 1991 and 27th July 2000
8.—(1) This paragraph applies to an application for a patent filed during the period beginning
with 7th January 1991 and ending with 27th July 2000(b) and to a patent granted in pursuance of
such application.
(2) Schedule 1 to these Rules has effect with the following modifications.
(3) In paragraph 2, for the words “involves the use of or concerns biological material”
substitute the words “requires for its performance the use of a micro-organism”.
(4) In paragraph 5(3)(b), insert at the beginning the words “in the case of an undertaking given
in accordance with paragraph 1(a),” and insert at the end the word “or” followed by:
“(c) in the case of an undertaking given in accordance with paragraph (1)(b), when the
patent is granted.”.
(5) Any reference to “biological material”—
(a) in paragraphs 3(1)(a), 4, 5, 6(3), 7(2) and 8 is a reference to “culture of the micro-
organism”; and
(b) other than in those provisions, is a reference to “micro-organism”.
(6) Paragraph 2(2)(b) (requirement that application contains relevant information) does not
have effect.
(a) The date that section 125A of the Patents Act 1977 came into effect (see paragraph 30 of Schedule 5 to the Copyright, Designs and Patents Act 1988 (c. 48)) and SI 1990/2168.
(b) The date that SI 2000/2037 came into force. Regulation 9 of that SI limits the amendments to applications made after the provision came into force.
67
(7) In paragraph 6(5)(b), for the words from “the period of 20 years” to the end of that
provision substitute “the period ending with the date on which the application was terminated or
withdrawn”.
(8) The specification of an application for a patent, or of a patent, must mention any
international agreement under which the micro-organism is deposited.
Continued application of Patents Rules 1968 to existing patents
9.—(1) This paragraph and paragraph 10 apply to existing patents and applications.
(2) Rules 4, 58 and 59 of the Patents Rules 1968(a) continue to apply.
Application of these Rules to existing patents and applications
10.—(1) Rules 4, 10(2), 44 to 50, 73 to 88, 101, 103 to 105 and 107 apply to existing patents
and applications.
(2) In those provisions as they apply by virtue of this paragraph, a reference to a specified
provision of these Rules other than one of those provisions is a reference to the corresponding
provision of the Patents Rules 1968 (any provision of those Rules being treated as corresponding
to a provision of these Rules if it was made for purposes which are the same as or similar to that
provision of these Rules).
Application of the 1995 Rules to sections 8 and 12
11. If before 1st January 2005 a question has been referred to the comptroller under section 8 or
12, in relation to that reference, sections 8, 11 and 12 have effect as if the amendments to those
sections by the Patents Act 2004(b) had not been made and rules 9 and 13 of the 1995 Rules have
effect as in force immediately before 1st January 2005.
(a) SI 1968/1389. (b) 2004 (c.16).
68
SCHEDULE 6 Rule 120(2)
REVOCATIONS
Title and number Extent of revocation
The Patents Rules 1978 (SI 1978/216) Rule 124.
The Patents Rules 1995 (SI 1995/2093) The whole rules.
The Patents (Supplementary Protection Certificates)
Rules 1997 (SI 1997/64)
The whole rules.
The Patents (Fees) Rules 1998 (SI 1998/1778) The whole rules.
The Patents and Trade Marks (World Trade Organisation)
Regulations 1999 (SI 1999/1899)
Regulations 9 to 12.
The Patents (Amendment) Rules 1999 (SI 1999/1092) The whole rules.
The Patents (Fees) (Amendment) Rules 1999 (1999/1093) The whole rules.
The Patents (Amendment) (No. 2) Rules 1999 (SI
1999/3197)
The whole rules.
The Patents (Amendment) Rules 2001 (SI 2001/1412) The whole rules.
The Patents (Amendment) Rules 2002 (SI 2002/529) The whole rules.
The Patents (Electronic Communications) (Amendment)
Rules 2003 (SI 2003/513)
The whole rules.
The Patents Act 2004 (Commencement No. 1 and
Consequential and Transitional Provisions) Order 2004
(SI 2004/2177) (C.94)
Articles 3 to 5.
The Patents (Amendment) Rules 2004 (SI 2004/2358) The whole rules.
The Patents Act 2004 (Commencement No. 2 and
Consequential, etc. and Transitional Provisions) Order
2004 (SI 2004/3205) (C.140)
Articles 3 to 8.
Article 9(2).
The Patents (Translations) Rules 2005 (SI 2005/687) The whole rules.
The Patents (Amendment) Rules 2005 (SI 2005/2496) The whole rules.
The Patents, Trade Marks and Designs (Address For
Service and Time Limits, etc) Rules 2006 (SI 2006/760)
Rules 4 to 9.
The Patents (Amendment) Rules 2007 (SI 2007/677) The whole rules.
69
EXPLANATORY NOTE
(This note is not part of the Rules)
These Rules are made under the Patents Act 1977 (c. 37) (“the Act”). They regulate applications
for patents and other procedures before the Patent Office in relation to patents. These Rules make
substantial changes to both the drafting and effect of the Patents Rules 1995 (SI 1995/2093) which
are revoked together with the other instruments listed in Schedule 6 to these Rules.
Part 1 of these Rules includes the commencement and general interpretation provisions.
Part 2 of these Rules includes the provisions relating to applications for patents. In particular, Part 2 includes provisions on international exhibitions (the Convention on International Exhibitions
signed in Paris on 22 nd
November 1928 is published in Cmnd 3776 Treaty Series 9/1931 and is
available on the website of the Foreign and Commonwealth Office), declarations of priority,
mention of the inventor, the form and content of applications, publication of the application,
preliminary examination, search and substantive examination. It also includes special provisions
on new applications filed under section 8(3), 12(6) or 37(4) or as mentioned in section 15(9) of the
Act.
Part 3 of these Rules includes the provisions relating to granted patents. In particular, this Part
includes the provisions on the certificate of grant, renewal of the patent and surrender.
Part 4 of these Rules includes the provisions relating to the register and other information. In particular, it sets out the information which must appear on the register and the conditions for
inspecting documents under section 118 of the Act. Also rule 54 makes provision for persons to
be notified of certain relevant events.
Part 5 of these Rules includes the provisions relating to European patents (UK). In particular, it
includes the translation requirements, the procedure for making a conversion request and certain
rules relating to the United Kingdom’s obligations under the European Patent Convention made in
Munich on 5 th
October 1973 (published in Cmnd 8510 Treaty Series 16/1982 and also available on
the website of the European Patent Organisation).
In particular, rule 56(9) and (10) implement Article 1(1) of the Agreement on the application of Article 65 of the Convention on the Grant of European Patents made in London on 17th October
2000. This is known as the London Agreement and is published in Cm 5247 Miscellaneous Series
No. 9 (2001) and the day the Agreement comes into force will be published by the Patent Office.
Rule 56(9) and (10) replaces the Patents (Translations) Rules 2005 (SI 2005/687).
Part 6 of these Rules includes the provisions relating to international applications for a patent (UK). These are made under the Patent Co-operation Treaty signed at Washington on 19
th June
1970 (published in Cmnd 7340 Treaty Series 78/1978 and also available on the website of the
World Intellectual Property Organisation (WIPO)). Part 6 of these Rules makes provisions for
translations and beginning the national phase, and (for the purposes of these applications) alters
periods prescribed elsewhere in the Rules.
Part 7 of these Rules includes provisions governing proceedings heard before the comptroller. In particular rule 74 creates an overriding objective for such proceedings. Rule 76 sets out how a
person starts proceedings, and rules 77 and 78 govern how other persons may join those
proceedings. Subsequent rules set out requirements for, and powers of the comptroller in relation
to, the giving of evidence and the management of proceedings.
Part 8 of these Rules includes provisions on opinions on validity or infringement under section 74A of the 1977 Act. It also sets out the procedure for reviewing such opinions.
Part 9 of these Rules includes miscellaneous provisions, including those on agents, corrections, address for service, translations, extension of periods of time, supplementary protection
certificates and publication of documents.
Schedule 1 makes provision for the deposit of biological material. This gives effect to the
Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for the
70
purposes of Patent Procedure signed at Budapest on 28 th
April 1977, as amended on 26 th
September 1980 (published in Cmnd 8136 Treaty Series 5/1981 and available on the WIPO
website).
Schedule 2 contains formal and other requirements.
Schedule 3 contains a list of applications, references, requests and oppositions to which Part 7 applies. It also lists those rules in Part 7 which apply to any proceedings before the comptroller
and those rules in Part 7 which apply to proceedings for a review of an opinion.
Part 1 of Schedule 3 includes applications that may be under Community legislation in relation to EU compulsory licences and supplementary protection certificates. The European Parliament and
Council adopted Regulation (EC) No 816/2006 of 17 May 2006 on compulsory licensing of
patents relating to the manufacture of pharmaceutical products for export to countries with public
health problems (OJ No L 157, 9.6.2006, p1). The European Parliament and Council also adopted
Regulation (EC) No 1901/2006 of 12 December 2006 on medicinal products for paediatric use (OJ
No L 378, 27.12.2006, p1). This amends, among other Community instruments, Council
Regulation (EEC) No 1768/92 of 18 June 1992 concerning the creation of a supplementary
protection certificate for medicinal products (OJ No L 182, 2.7.92, p1). Provision is also made in
relation to Regulation (EC) No 1610/96 of the European Parliament and of the Council of 23 July
1996 concerning the creation of a supplementary protection certificate for plant protection
products (OJ No L 198, 8.8.96, p30).
Schedule 4 relates to the extension of time limits.
Schedule 5 contains transitional provisions.
An impact assessment has been prepared and copies placed in the libraries of both Houses of
Parliament. Copies are also available from Patents Legal Section, Concept House, Cardiff Road,
Newport NP10 8QQ.
71
The Patents (Fees) Rules 2007
(as amended)
An unofficial consolidation of the Patents (Fees) Rules 2007 (SI 2007 No.
3292) incorporating the amendments made by:
the Trade Marks and Trade Marks and Patents (Fees) (Amendment) Rules 2009 (SI 2009 No.
2089)
Citation, commencement and interpretation
1.—(1) These Rules may be cited as the Patents (Fees) Rules 2007 and they shall come into
force on 17 th
December 2007.
(2) In these Rules—
(a) “the Act” means the Patents Act 1977 and references to a section are references to a
section of the Act; and
(b) “the 2007 Rules” means the Patents Rules 2007(a).
Use of a form
2.—(1) Except where any of rules 3 to 7 apply, the fees to be paid in respect of any matters arising
under the Act are those specified in Schedule 1.
(2) Where a form—
(a) is required to be used by the 2007 Rules; and
(b) is specified in Schedule 1 as the corresponding form in relation to any matter,
that form must be accompanied by the fee specified in respect of that matter.
(3) But where any provision of the 2007 Rules permits payment to be made before or after the
form has been filed, the fee may be paid accordingly.
Application fee and the fee to begin the national phase
3.—(1) The application fee is—
(a) in respect of an international application for a patent (UK), nil;
(b) in respect of any other application for a patent, including an application treated as an
application under the Act following a direction under section 81 (conversion of European
patent applications), £30 (except where an application is filed in electronic form or using
electronic communications in accordance with directions given under section 124A and
the application is accompanied by the fee, in which case the application fee is £20).
(4) The prescribed fee to begin the national phase of an international application for a patent
(UK) is £30.
(a) SI 2007/3291.
72
Electronic filing fee reduction
3A.—Where Form 9A or 10 is filed in electronic form or using electronic communications in
accordance with directions given under section 124A, the fee specified in Schedule 1 in respect of
a request for search in accordance with rule 27 of the 2007 Rules or a request for a substantive
examination in accordance with rule 28 of the 2007 Rules shall in each case be reduced by £10.
Renewal fees
4.—(1) Subject to paragraphs (2) and (3), the fee to be paid to keep a patent in force after a
renewal date which falls on the anniversary indicated in the first column of the table in Part 1 of
Schedule 2 is the amount specified in relation to that anniversary in the second column.
(2) Where rule 37(3) of the 2007 Rules applies, the fee to be paid to keep a patent in force after
the first renewal date is the sum of the following amounts—
(a) the amount specified in relation to the relevant anniversary; and
(b) the amounts specified in relation to all previous anniversaries.
(3) Where rule 37(4) of the 2007 Rules applies, the fee to be paid to keep a patent in force after
the first renewal date is the amount specified in relation to the relevant anniversary.
(4) For the purposes of paragraphs (2) and (3), the relevant anniversary is the last anniversary
to fall on or before the first renewal date.
Additional fees for late renewal
5.—(1) The additional fees prescribed for late payment under section 25(4) are specified in Part
2 of Schedule 2.
(2) Where payment is made before the end of the month indicated in the first column of that
table, the fee to be paid is the amount specified in the second column.
Supplementary protection certificates
6.—(1) The prescribed fee payable for a supplementary protection certificate to take effect is set
in accordance with paragraph (2).
(2) Where the certificate expires during the period of one year beginning with—
(a) the start date, the fee is £600;
(b) the first anniversary of the start date, the fee is £1,300;
(c) the second anniversary of the start date, the fee is £2,100;
(d) the third anniversary of the start date, the fee is £3,000; or
(e) the fourth anniversary of the start date, the fee is £4,000.
(3) The period in paragraph (2) shall be calculated without reference to any extension of the
duration of a supplementary protection certificate under Article 13(3) of the Medicinal Products
Regulation(a).
(4) The additional fee prescribed for the purposes of paragraph 5(b) of Schedule 4A to the Act
(supplementary protection certificates) shall be half the prescribed fee.
(5) In this rule “start date” is the first day following the day on which the basic patent expires.
(a) Council Regulation (EEC) No 1768/92 (OJ No L 182, 2.7.92, p1) as amended by Regulation (EC) 1901/2006 (OJ No L 378, 27.12.2006, p1).
73
Other fees
7.—(1) The prescribed fee to publish a translation filed at the Patent Office under section 89A(3)
or (5) (international and national phases of application) is £12.
(2) The prescribed fee for an application to the comptroller for an order under the Evidence
(Proceedings in Other Jurisdictions) Act 1975(a) as applied by section 92(1) (obtaining evidence
for proceedings under the European Patent Convention) is nil.
(3) The fee to transmit an international application for a patent filed at the Patent Office to the
International Bureau and the International Searching Authority is £55.
(4) In paragraph (3) “International Searching Authority” has the same meaning as in the Patent
Co-operation Treaty.
(a) 1975 c. 34.
74
SCHEDULE 1 Rule 2
USE OF FORMS
Patents Form
Number
Item Amount (£)
1 On request for the grant of a patent in accordance with rule
12(1) of the 2007 Rules
—
2 On starting proceedings in relation to applications, references
or requests in accordance with rule 76(1) of, and the provisions
mentioned in Part 1 of Schedule 3 to, the 2007 Rules (except
those started on Form SP3)
50
On applying for the review of an opinion in accordance with
rule 98(3) of the 2007 Rules
50
3 On making a declaration for the purposes of section 5(2), in
relation to an earlier relevant application filed during the period
allowed by section 5(2A)(a), in accordance with rule 6 of the
2007 Rules
40
On request for permission to make a late declaration of priority
under section 5(2B) in accordance with rule 7 of the 2007
Rules
150
7 On making a statement identifying the inventor and indicating
the derivation of the right to the grant of a patent under section
13(2) in accordance with rule 10(4) of the 2007 Rules
—
8 On request for a certificate authorising the release of a sample
of biological material in accordance with rule 13(1) of, and
paragraph 4 or 7 of Schedule 1 to, the 2007 Rules
—
8A On request that a sample of the biological material should only
be made available to an expert in accordance with rule 13(1)
of, and paragraph 6 of Schedule 1 to, the 2007 Rules
—
9 On request for a further search under section 17(6) or payment
for a supplementary search under section 17(8) (in relation to
applications initiated before 1st January 2005) in accordance
with paragraph 5 of Schedule 5 to the 2007 Rules
100
9A On request for a search under section 17(1) in accordance with
rule 27 of the 2007 Rules—
(a) in respect of an international application for a patent
(UK), which has already been the subject of a search
by the International Searching Authority;
80
(b) in respect of any other application. 100
On request for a further search under section 17(6) or payment
for a supplementary search under section 17(8) in accordance
with rule 27 of the 2007 Rules
100
10 On request for a substantive examination of an application in
accordance with rule 28 of the 2007 Rules
70
12 (See Schedule 2)
75
14 On request under section 20A for reinstatement of an
application in accordance with rule 32 of the 2007 Rules
150
15 On giving notice of opposition in accordance with rule 76 of,
and the provisions mentioned in Part 2 of Schedule 3 to, the
2007 Rules
50
16 On application under section 28 for restoration of a patent in
accordance with rule 40 of the 2007 Rules
135
17 On request for an opinion under section 74A in accordance
with rule 93 of the 2007 Rules
200
20 On request to correct a name in accordance with rule 49 of the
2007 Rules
—
21 On application to register (or to give notice of) any transaction,
instrument or event mentioned in section 32(2)(b) or 33(3) in
accordance with rule 47 of the 2007 Rules
—
23 On application for a certified copy of an entry in the register, or
a certified extract from the register, or of a relevant document
in accordance with rule 46(1) or 48(5) of the 2007 Rules
20
On application for an uncertified copy of an entry in the
register, or an uncertified extract from the register, or of a
relevant document in accordance with rule 46(2) or 48(5) of the
2007 Rules
5
On request for a certified copy of an international application
filed at the Patent Office as the competent receiving Office in
accordance with rule 65(4) of the 2007 Rules
20
On application for a certificate in accordance with rule 46(3) of
the 2007 Rules
20
28 On application under section 46(1) for an entry to be made on
the register that a licence is available as of right in accordance
with rule 43(1) of the 2007 Rules
—
30 On application under section 47(1) for the cancellation of an
entry made under section 46 in accordance with rule 43(3) of
the 2007 Rules
—
49 On request to be notified of a relevant event in accordance with
rule 54 of the 2007 Rules
25
51 On appointment of an agent in accordance with rule 101 of the
2007 Rules
—
52 On request for extension of a period of time in accordance with
rule 108(2) and (3) of the 2007 Rules
135
54 On filing a translation of the specification of a European patent
(UK) in accordance with rule 56 of the 2007 Rules
—
On filing a translation of the claims of the specification of an
application for a European patent (UK) in accordance with rule
56 of the 2007 Rules
—
On filing a corrected translation under section 80(3) in
accordance with rule 57 of the 2007 Rules
—
SP1 On application for a supplementary protection certificate under
Article 8 of the Medicinal Products or Plant Protection
250
76
Products Regulations(a)in accordance with rule 116 of the
2007 Rules
SP2 (see rule 0)
SP3 On application to review lapse or for a declaration of invalidity
under Articles 14 or 15 of the Medicinal Products or Plant
Protection Products Regulations or for revocation of an
extension of the duration of a supplementary protection
certificate under Article 15a of the Medicinal Products
Regulation in accordance with rule 76 of the 2007 Rules
50
SP4 On application for an extension of the duration of a
supplementary protection certificate under Article 8 of the
Medicinal Products Regulation in accordance with rule 116 of
the 2007 Rules
200
(a) Regulation (EC) No 1610/96 (OJ No L 198, 8.8.96, p30).
77
SCHEDULE 2 Rules 4 and 5
RENEWAL FEES
PART 1
RENEWAL FEE
Anniversary of date of filing Amount (£)
4th 50
5th 70
6th 90
7th 110
8th 130
9th 150
10th 170
11th 190
12th 210
13th 230
14th 250
15th 270
16th 300
17th 330
18th 360
19th 400
PART 2
ADDITIONAL FEE
Month beginning after the expiry of the period for payment of the renewal fee
Amount of additional renewal fee
(£)
1st 0
2nd 24
3rd 48
4th 72
5th 96
6th 120
78
EXPLANATORY NOTE
(This note is not part of the Rules)
These Rules prescribe fees in relation to matters arising under the Patents Act 1977 and the
Patents Rules 2007 (SI 2007/3291). These Rules take into account the Patents Rules 2007 and the
revocation by those Rules of the Patents (Fees) Rules 1998 (SI 1998/1778) as last amended by the
Patents (Amendment) Rules 2005 (SI 2005/2496). There have been no fee increases.
Where a form is specified in Schedule 1 in relation to any matter, that form must be sent to the
comptroller together with the relevant fee for that matter, unless the Patents Rules 2007 specify
otherwise (rule 2).
The application fees for a national (UK) patent application and for an international application for
a patent (UK) are set out in rule 3(1) and the fee for an international application for a patent (UK)
to enter the UK national phase is set out in rule 3(2).
Fees for renewal of a patent, including late renewal, are set out in Schedule 2 (rules 4 and 5).
Provision is also made for fees in respect of supplementary protection certificates for medicinal
and plant protection products. These relate to matters arising under the provisions of Council
Regulation (EEC) No 1768/92 of 18 June 1992 concerning the creation of a supplementary
protection certificate for medicinal products (OJ No L 182, 2.7.92, p1) as amended by Regulation
(EC) 1902/2006 of the European Parliament and of the Council of 12 December 2006 on
medicinal products for paediatric use (OJ No L 378, 27.12.2006, p1). As regards plant protection
products, the fees relate to Regulation (EC) No 1610/96 of the European Parliament and of the
Council of 23 July 1996 concerning the creation of a supplementary protection certificate for plant
protection products (OJ No L 198, 8.8.96, p. 30).
The Patents (Supplementary Protection Certificates) Rules 1997 (SI 1997/64), which formerly
made provision for fees in respect of supplementary protection certificates for medicinal and plant
protection products, have been revoked by the Patents Rules 2007. Schedule 1 sets out certain
fees relating to supplementary protection certificates, and rule 6 sets out the fees payable for a
supplementary protection certificate to take effect.
Rule 7 sets out other fees relating to publication of translations of international applications and
applications to the comptroller for orders to assist in obtaining evidence for proceedings under the
European Patent Convention made in Munich on 5th October 1973 (published in Cmnd 8510
Treaty Series 16/1982 and also available on the website of the European Patent Organisation), and
the transmission of an international application for a patent from the Patent Office to the
International Bureau and the International Searching Authority under the Patent Co-operation
Treaty signed at Washington on 19 th
June 1970 (published in Cmnd 7340 Treaty series 78/1978
and also available on the website of the World Intellectual Property Organisation).
An impact assessment has been prepared and copies placed in the libraries of both Houses of
Parliament. Copies are also available from Patents Legal Section, Concept House, Cardiff Road,
Newport NP10 8QQ.