The Patents (Amendment) Rules 2007
 

The Patents (Amendment) Rules 2007

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Crown Copyright Acknowledged
CONTENTS

Statutory Instruments

2007 No. 3291

PATENTS

The Patents Rules 2007

Made: 19th November 2007

Laid before Parliament: 22nd November 2007

Coming into force: 17th December 2007

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

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

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

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)

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(1).

In accordance with section 8 of the Tribunals and Inquiries Act 1992(2), the Secretary of State has consulted the Administrative Justice and Tribunals Council.

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—

(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.

(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—

(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

(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.

(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.

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

(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.

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

(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);

(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,

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).

 
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