LegalizeS.I. No. 179/1992 - Patents Rules, 1992
This is the act as published. Later amendments are not folded into the text below: each one is a separate act in this repository and an entry in this law's history.
15 amending acts · 2019-11-29, S.I. No. 589/2019 - Patents (Amendment) Rules 2019
S.I. No. 179 of 1992.
PATENTS RULES, 1992.
ARRANGEMENT OF RULES.
Preliminary.
Rule
4. Revocation of existing rules, etc.
Rules for Part II, Chapter II of the Act.
Rules for Part II, Chapter III of the Act.
6. Identification of inventor.
7. Right to be mentioned as inventor.
14. Requirements concerning applications relating to micro-organisms.
15. Form of documents accompanying application.
16. Documents filed subsequently.
17. Single inventive concept; claims allowable.
18. Prescribed period in relation to late or non-filing of drawings.
19. Prescribed period for filing claims and abstract.
20. Provisions as to divisional applications.
22. Declaration of priority and priority documents.
23. Publication of application.
Rules for Part II, Chapter IV of the Act.
25. Corresponding applications abroad.
27. Evidence under section 30.
28. Amendment following evidence.
29. Period for payment of fee for grant.
30. Amendment of request for grant.
31. Amendment of description, claims or drawings.
Rules for Part II, Chapter V of the Act.
35. Application for restoration.
36. Opposition to the restoration.
38. Conditions of restoration.
39. Amendment of specification of patent.
Rules for Part II, Chapter VIII of the Act.
41. Revocation of patent by the Controller.
42. Award of costs in revocation proceedings.
43. Revocation of patent on Controller's initiative.
Rules for Part III of the Act.
44. Request for grant of short-term patent.
Rules for Part IV of the Act.
46. Application for entry that licences of right are available.
47. Application for settlement of terms of licence.
48. Cancellation of licence of right entry.
49. Opposition to cancellation.
50. Application for compulsory licence, etc.
51. Consideration of evidence by Controller.
52. Opposition to application.
Rules for Part VI of the Act.
53. Filing new application following order of Controller.
54. Request to continue use following transfer of patent.
Rules for Part VII of the Act.
56. Inspection of the register.
57. Change of name, etc. in register.
58. Application for registration of title, etc.
59. Cancellation of entry of interest in register.
60. Entry in register of payment of renewal fees.
61. Rectification of register.
62. Request for certificate of Controller.
63. Request for copy of document.
65. Inspection of documents and publication of data.
Rules for Part VIII of the Act.
68. Application for and notice of intention to attend hearing.
71. Form of statutory declaration.
72. Person before whom declaration made outside the State is to be taken.
73. Notice of seal of officer taking declaration to prove itself.
74. Time for filing evidence, etc.
75. Notice of application to Court.
Rules for Part IX of the Act.
77. Days and hours of business.
Rules for Part X of the Act.
79. Authorisation of patent agents.
80. Recognition of patent agents.
81. Place of residence of patent agents.
Rules for Part XI of the Act.
Rules for Part XII of the Act.
83. Translation of specification of European patent.
84. Translation of claims of European application.
85. Publication by the Office of corrected translation.
86. Conversion of European patent applications.
87. Filing of international applications at Office.
88. Communication of information.
General.
93. Representation by patent agent.
95. Documents in a foreign language.
96. Power to dispense with evidence, signature, etc.
97. General power of amendment.
98. General power to enlarge time.
99. Reinstatement of application.
Schedule I.
Fees Payable.
Schedule II.
Forms.
Schedule III.
Rules Revoked.
S.I. No. 179 of 1992.
PATENTS RULES, 1992.
I, DESMOND O'MALLEY, Minister for Industry and Commerce, in exercise of the powers conferred on me by section 114 of the Patents Act, 1992 (No. 1 of 1992), and in exercise, with the sanction of the Minister for Finance, of the powers conferred on me by section 99 of that Act, hereby make the following Rules:
Preliminary.
1 Citation.
1. These Rules may be cited as the Patents Rules, 1992.
2 Commencement.
2. These Rules shall come into operation on such day as the Minister appoints under section 1(2) for the commencement of the Act.
3 Interpretation.
3. (1) In these Rules—
"the Act" means the Patents Act, 1992 ;
"Form" means a form set out in Schedule II.
- (2) In these Rules, unless otherwise indicated, a reference by number to a Rule is to the Rule of these Rules bearing that number and a reference to a paragraph is a reference to a paragraph of the Rule in which the reference occurs.
4 Revocation of existing rules, etc.
4. (1) Subject to paragraph (2), the Rules specified in Schedule III to these Rules are hereby revoked.
- (2) The said Rules shall continue to apply in relation to any matter to which, by virtue of section 5 of and the First Schedule to the Act, any provisions of the Act of 1964 continue to apply.
Rules for Part II, Chapter II of the Act.
5 Certificate of exhibition.
5. (1) An applicant for a patent who wishes the disclosure of matter constituting an invention to be disregarded in accordance with section 12 (1) (b) shall, at the time of the filing of the patent application, inform the Controller in writing that the invention has been displayed at an international exhibition.
- (2) The applicant shall, within four months of the date of filing of the patent application, file the certificate referred to in section 12 (1) (b) issued at the exhibition by the authority responsible for the protection of industrial property at that exhibition, and stating that the invention was in fact exhibited there. The certificate shall also state the opening date of the exhibition and, where the first disclosure of the invention did not coincide with the opening date of the exhibition, the date of the first disclosure. The certificate shall be accompanied by an identification of the invention, duly authenticated by the above-mentioned authority.
Rules for Part II, Chapter III of the Act.
6 Identification of inventor.
6. (1) Subject to the provisions of Rules 86 (1) and (2), if the applicant is not the sole inventor or the applicants are not the joint inventors, the statement under section 17 (2) identifying the inventor or inventors and, where required by section 17 (2)(b), the derivation of the right of the applicant or applicants to be granted the patent shall be made on Form No. 2 within the period of sixteen months after the date of priority or, where there is no claim to priority, the date of filing the application. An extra copy of this Form shall be filed for each inventor who is not also an applicant.
- (2) If the statement referred to in paragraph (1) is furnished at the date of filing of the application it may be made on Form No. 1.
- (3) Where a divisional application, or a new application under section 81, is filed after the period of 16 months prescribed in paragraph (1), the requirement of that provision shall be complied with at the actual filing date of the divisional or new application as the case may be.
7 Right to be mentioned as inventor.
7. (1) An application to the Controller in pursuance of section 17 (1) or (3) by any person who alleges—
( a ) that he ought to have been mentioned as the inventor or joint inventor of an invention in any specification of a patent granted or published application for a patent for the invention; or
( b ) that any person mentioned as sole or joint inventor in any specification of a patent granted or published application for a patent for the invention ought not to have been so mentioned,
shall be accompanied by a statement in duplicate setting out fully the facts relied upon.
- (2) The Controller shall send a copy of the application and statement to—
( a ) every person registered as applicant for or proprietor of the patent (other than the section 17 applicant himself),
( b ) every person who has been identified in the patent application or a statement filed under section 17 (2) (a) as being or being believed to be the inventor or joint inventor of the invention, and
( c ) every other person whose interests the Controller considers may be affected by the application under paragraph (1).
- (3) Any recipient of such a copy of the application and statement who wishes to oppose the application shall, within three months of their receipt, file a counter-statement in duplicate setting out fully the grounds of his objection and the Controller shall send a copy of the counter-statement to each of the persons described in this Rule other than any person who is party to the counter-statement.
- (4) The Controller may give such directions as he may think fit with regard to the subsequent procedure.
8 Form of request for grant.
8. The request for the grant of a patent referred to in section 18 shall be made in Form No. 1.
9 Title of invention.
9. The title of the invention appearing in the request for grant shall be the same as the title in the specification.
10 Description.
10. The specification forming part of a patent application in accordance with section 18 shall commence with the title of the invention (which shall be brief and indicate the matter to which the invention relates), continue with the description of the invention followed by the claim or claims and drawings, if any, in that order.
11 Claims.
11. (1) Subject to section 21 a patent application may contain two or more independent claims in the same category (product, process, apparatus or use) where it is not appropriate, having regard to the subject-matter of the application, to cover this subject-matter by a single claim.
- (2) Any claim stating the essential features of an invention may be followed by one or more claims concerning particular embodiments of that invention.
- (3) If there are several claims, they shall be numbered consecutively in arabic numerals.
12 Drawings.
12. (1) Drawings forming part of a patent application in accordance with section 18 shall be on sheets the usable surface area of which shall not exceed 26.2 cm x 17 cm. These sheets shall not contain frames round the usable or used surface. The minimum margins shall be as follows:
| top: | 2.5 cm |
| left side: | 2.5 cm |
| right side: | 1.5 cm |
| bottom: | 1.0 cm |
- (2) Drawings shall be executed as follows:
( a ) Drawings shall be executed in durable, black, sufficiently dense and dark, uniformly thick and well defined, lines and strokes without colourings.
( b ) Cross-sections shall be indicated by hatching which should not impede the clear reading of the reference signs and leading lines.
( c ) The scale of the drawings and the distinctness of their graphical execution shall be such that a photographic reproduction with a linear reduction in size to two-thirds would enable all details to be distinguished without difficulty. If, as an exception, the scale is given on a drawing, it shall be represented graphically.
( d ) All numbers, letters, and reference signs, appearing on the drawings, shall be simple and clear. Brackets, circles or inverted commas shall not be used in association with numbers and letters.
( e ) All lines in the drawings shall, ordinarily, be drawn with the aid of drafting instruments.
- (f) Elements of the same figure shall be in proportion to each other, unless a difference in proportion is indispensable for the clarity of the figure.
( g ) The height of the numbers and letters shall not be less than 0.32 cm. For the lettering of drawings, the Latin and, where customary, the Greek alphabets shall be used.
( h ) The same sheet of drawings may contain several figures. Where figures drawn on two or more sheets are intended to form one whole figure, the figures on the several sheets shall be so arranged that the whole figure can be assembled without concealing any part of the partial figures. The different figures shall be arranged without wasting space, preferably in an upright position, clearly separated from one another. Where the figures are not arranged in an upright position, they shall be presented sideways with the top of the figures at the left side of the sheet. The different figures shall be numbered consecutively in arabic numerals, independently of the numbering of the sheets.
( i ) Reference signs not mentioned in the description and claims shall not appear in the drawings, and vice versa. The same features, when denoted by reference signs, shall, throughout the application, be denoted by the same signs.
( j ) The drawings shall not contain text matter, except, when absolutely indispensable, a single word or words such as "water", "steam", "open", "closed", "section on AA", and, in the case of electric circuits and block schematic or flow sheet diagrams, a few short catch words indispensable for understanding.
- (3) Flow sheets and diagrams are considered as drawings.
13 The abstract.
13. (1) The abstract forming part of a patent application in accordance with section 18 shall commence with the title of the invention.
- (2) The abstract shall contain a concise summary of the matter contained in the specification. The summary shall indicate the technical field to which the invention pertains and shall be drafted in a way which allows an understanding of the technical problem, the gist of the solution of that problem through the invention and the principal use or uses of the invention. The abstract shall, where appropriate, contain the chemical formula which, among those contained in the specification, best characterises the invention. It shall not contain statements on the alleged merits or value of the invention or on its speculative application.
- (3) The abstract shall preferably not contain more than one hundred and fifty words.
- (4) If the patent application contains drawings, the applicant shall indicate the figure or, exceptionally, the figures of the drawings which he suggests should accompany the abstract when the abstract is published. The Controller may decide to publish one or more other figures if he considers that they better characterise the invention. Each main feature mentioned in the abstract and illustrated by a drawing shall be followed by a reference sign, placed between parentheses.
- (5) The abstract shall be so drafted that it constitutes an efficient instrument for purposes of searching in the particular technical field particularly by making it possible to assess whether there is a need for consulting the patent application itself.
14 Requirements concerning applications relating to micro-organisms.
14. (1) The specification of an application for a patent, or of a patent, for an invention which requires for its performance the use of a micro-organism—
( a ) which is not available to the public at the date of filing of the application; and
( b ) which cannot be described in the specification in such a manner as to enable the invention to be performed by a person skilled in the art,
shall, in relation to the micro-organism itself, be treated for the purposes of the Act as disclosing the invention in such a manner only if the relevant conditions set out in paragraph (2) are satisfied.
- (2) The conditions referred to in paragraph (1) are—
( a ) a condition that—
- (i) not later than the actual filing date of the application, a culture of the micro-organism has been deposited in a depositary institution; and
- (ii) the name of the depositary institution, the date when the culture was deposited and the accession number of the deposit are given in the specification of the application; and
( b ) a condition, in the case of a European patent designating the State or an application for a European patent designating the State which is treated, by virtue of section 119 and 122 as a patent or an application for a patent respectively under the Act, that the corresponding provisions of the Implementing Regulations to the European Patent Convention have been complied with,
and where paragraphs (17) to (19) apply, a further condition that the applicant or proprietor makes a new deposit in accordance with those paragraphs.
- (3) Where, except in the case of a divisional application, the information specified in paragraph (2) (a) (ii) is not contained in an application for a patent as filed, it shall be added to the application—
( a ) before the end of the sixteenth month after the date of priority or, if no priority has been claimed, the date of filing of the application;
( b ) where, on a request made by the applicant, the Controller publishes the application before the end of the period specified in section 28 (1), before the date of the request; or
( c ) where the Controller sends notification to the applicant that under section 88 he has received a request by any person for information or inspection of documents relating to an unpublished application, before the end of one month after his sending to the applicant notification of his receipt of the request;
which ever is the earliest.
- (4) The giving of the information specified in paragraph (2) (a) (ii) shall constitute the unreserved and irrevocable consent of the applicant to the depositary institution with which a culture (including a deposit which is to be treated as having always been available by virtue of paragraph (18)) is from time to time deposited making the culture available on receipt of the Controller's certificate authorising the release to the person who is named therein as a person to whom the culture may be made available and who makes a valid request therefor to the institution.
- (5) The specification of an application for a patent described in paragraph (1) shall mention any international agreement under which the micro-organism concerned is deposited.
- (6) Save where paragraphs (13) to (16) have effect, a request that the Controller certify a person as a person to whom a depositary institution may make available a sample of a micro-organism—
( a ) before publication of the application for a patent, to a person who has made a request under section 88; and
( b ) at any later time, to any person,
shall be made in Form No. 6 (which shall be filed in duplicate together with the form provided for by the Regulations under the Budapest Treaty). The request shall be accompanied by the prescribed fee.
- (7) The Controller shall send copies of the forms lodged with him under paragraph (6) and of his certificate authorising the release of the sample—
( a ) to the applicant for, or proprietor of, the patent;
( b ) to the depositary institution; and
( c ) to the person making the request.
- (8) A request under paragraph (6) shall include, on the part of the person to whom the request relates, an undertaking for the benefit of the applicant for, or proprietor of, the patent—
( a ) not to make the culture, or any culture derived from it, available to any other person; and
( b ) not to use the culture, or any culture derived from it, otherwise than for experimental purposes relating to the subject matter of the invention.
In this paragraph, references to a culture derived from a deposited culture of a micro-organism are references to a culture so derived which exhibits those characteristics of the deposited culture essential for the performance of the invention.
- (9) Subject as hereinafter provided by this paragraph both undertakings referred to in paragraph (8) shall have effect during any period before the application for a patent has been withdrawn, is deemed to be withdrawn, or is the subject of a final refusal, but excluding, if an application is reinstated, the period before it is reinstated; provided that if a patent is granted on the application, the undertaking at (a) shall also have effect during any period for which the patent is in force and during the period of six months referred to in section 36 (3); provided also that the undertaking set out in (b) shall not have effect after the date of publication in the Journal of a notice that the patent has been granted.
- (10) For the purpose of enabling any act specified in section 77 to be done in relation to the culture for the service of the State, the undertakings specified in paragraph (8)—
( a ) shall not be required from any Minister of the Government, by himself or by such of his officers, servants or agents as may be authorised in writing by him or any other person acting on his behalf for the purposes of this paragraph; and
( b ) shall not have effect in relation to any such person who has already given them.
- (11) An undertaking given pursuant to paragraph (8) may be varied by way of derogation by agreement between the applicant or proprietor and the person by whom it is given.
- (12) Where, in respect of a patent to which the undertaking set out in paragraph (8) (a) has effect—
( a ) an entry is made in the register under section 68 to the effect that licences are to be available as of right; or
( b ) a compulsory licence is granted under section 70,
that undertaking shall not have effect to the extent necessary for effect to be given to any such licence.
- (13) Where, before the preparations for publication of an application for a patent under section 28 have been completed, the applicant gives notice to the Controller on Form No. 7 of his intention that a sample of the micro-organism should be made available only to an expert, the provisions of paragraphs (14) to (16) shall have effect.
- (14) The following may be nominated as an expert for the purposes of this Rule—
( a ) any natural person, provided that any person wishing to have a sample of the micro-organism made available furnishes evidence, when applying under paragraph 16, that the person nominated has the approval of the applicant for the patent; or
( b ) any natural person recognised as an expert by the President of the European Patent Office.
- (15) The Controller—
( a ) shall publish with the application notice that the provisions of paragraphs (14) to (16) have effect; and
( b ) notwithstanding paragraphs (6) to (8) shall not, until the patent is granted or the application has been withdrawn, is deemed to be withdrawn, or is the subject of a final refusal issue any certificate authorising release of a sample otherwise than under paragraphs (14) to (16).
- (16) ( a ) Any person wishing to have a sample of the micro-organism made available ("the requester") shall apply to the Controller in Form No. 8 (which shall be filed in duplicate together with the form provided for by the Regulations under the Budapest Treaty) nominating the person ("the expert") to whom he wishes the sample to be made available. The requester shall at the same time file undertakings by the expert in the terms set out in paragraph (8) and shall pay the prescribed fee.
( b ) The Controller shall send a copy of any form lodged with him under this paragraph and his certificate authorising the release of the sample—
- (i) to the applicant for the patent,
- (ii) to the depositary institution concerned,
- (iii) to the requester, and
- (iv) to the expert.
- (17) Where the depositary institution with which a deposit or a new deposit of a culture has been made under this Rule—
( a ) notifies the applicant or proprietor that it—
- (i) cannot satisfy a request made in accordance with paragraphs (6) or (16), or
- (ii) is not able, lawfully, to satisfy such a request, for the culture to be made available;
( b ) ceases temporarily or permanently to carry out the functions of a depositary institution; or
( c ) ceases for any reason to conduct its activities as a depositary institution in an objective and impartial manner,
then, subject to paragraph (19), the applicant or proprietor may, unless the culture has been transferred to another depositary institution which is able to make it available, make a new deposit of a culture of that micro-organism.
- (18) For the purposes of paragraphs (1) to (5) and of paragraphs (17) and (19), the deposit shall be treated as always having been available if, within three months of the receipt of such notification or of the depositary institution ceasing to perform the functions of a depositary institution or to conduct its activities as such an institution in an objective and impartial manner, the applicant or proprietor—
( a ) in a case where the deposit has not already been transferred, makes the new deposit;
( b ) furnishes to the depositary institution with which the new deposit is made a declaration that the culture so deposited is of the same micro-organism as was the culture originally deposited; and
( c ) requests amendment of the specification under section 32 or section 38, as the case may be, so as to indicate the accession number of the transferred or new deposit and, where applicable, the name of the depositary institution with which the deposit has been made.
- (19) The new deposit referred to in paragraph (17)—
( a ) shall, save as provided in the following subparagraph of this paragraph, be made with the same depositary institution as was the original deposit; or
( b ) in the cases referred to in paragraph (17) (a) (ii), (b) and (c) shall be made with another depositary institution which is able to satisfy the request.
- (20) In this Rule "the Budapest Treaty" means the Treaty on the International Recognition of the Deposit of Micro-organisms for the purposes of Patent Procedure done at Budapest in 1977.
- (21) For the purposes of this Rule a "depositary institution" is an institution which, at all relevant times—
( a ) carries out the functions of receiving, accepting and storing micro-organisms and the furnishing of samples thereof; and
( b ) conducts its affairs in so far as they relate to the carrying out of those functions in an objective and impartial manner.
15 Form of documents accompanying application.
15. (1) All documents making up a patent application under section 18 other than the request for grant (specification, drawings and abstract) shall be filed in duplicate and shall be in the English language.
- (2) All documents making up a patent application shall be so presented as to admit of direct reproduction by photography, electrostatic processes, photo offset and micro-filming, in an unlimited number of copies. All sheets shall be free from cracks, creases and folds. Only one side of the sheet shall be used, except in the case of the request for grant.
- (3) All such documents shall be on A4 paper (29.7 cm x 21 cm) which shall be pliable, strong, white, smooth, matt and durable. Subject to the provisions of Rule 12 (2) (h) and paragraph 10, each sheet shall be used with its short sides at the top and the bottom (upright position).
- (4) Each of the documents making up the patent application (request for grant, specification, drawings and abstract) shall commence on a new sheet. The sheets shall be connected in such a way that they can easily be turned over, separated and joined together again.
- (5) Subject to Rule 12 (1) the minimum margins shall be as follows—
| top: | 2.0 cm |
| left side: | 2.5 cm |
| right side: | 2.0 cm |
| bottom: | 2.0 cm |
- (6) The margins of the documents making up the patent specification, when submitted, must be completely blank.
- (7) All sheets of the specification, except the drawings, shall be numbered consecutively and such numbering shall be in arabic numerals placed at the top of the sheet, in the middle, but not in the top margin.
- (8) All sheets of drawings, when filed, shall be numbered consecutively as a separate series. Such numbering shall be in arabic numerals placed at the top of the sheet, in the middle, but not in the top margin.
- (9) The lines of each sheet of the description and of the claims shall preferably be numbered in sets of five, the numbers appearing on the left side, to the right of the margin.
- (10) The request for grant, the specification and the abstract shall be typed or printed. Only graphic symbols and characters and chemical or mathematical formulae may, if necessary, be written by hand or drawn. The typing shall be 1½ spaced. All text matter shall be in characters, the capital letters of which are not less than 0.21 cm high, and shall be in a dark indelible colour.
- (11) The request for grant, the description, the claims and the abstract shall not contain drawings. The description, the claims and the abstract may contain chemical or mathematical formulae. The description and the abstract may contain tables. The claims may contain tables only if their subject-matter makes the use of tables desirable.
- (12) Units of measurement shall be expressed in SI units in accordance with current EC Directives. Temperature shall be expressed in degrees Celsius. Where, exceptionally, different units are used those units shall also be expressed in terms of such SI units. For other physical values not covered by such SI system of units, the units recognised in international practice shall be used. For mathematical formulae the symbols in general use, and for chemical formulae the symbols,atomic weights and molecular formulae in general use shall be employed. In general, use should be made of technical terms, signs and symbols generally accepted in the field in question.
- (13) The terminology and the signs shall be consistent throughout the application.
- (14) Each sheet shall be legible and reasonably free from erasures and shall be free from alterations, overwritings and interlineations.
- (15) If a formula is used in the description or claims a copy thereof, prepared in the same manner as drawings, shall be furnished if the Controller so directs.
16 Documents filed subsequently.
16. (1) The provisions of Rules 12 and 15 shall apply to documents replacing documents making up a patent application.
- (2) All documents other than those referred to in paragraph (1) shall normally be typewritten or printed and shall have a margin of about 2.5 cm on the left-hand side of each page and shall comply with Rule 15 (3).
- (3) Such documents as must be communicated to other persons or as relate to two or more patent applications or patents, shall be filed in a sufficient number of copies.
17 Single inventive concept; claims allowable.
17. Section 21 shall be construed as permitting in particular that one and the same patent application may include—
( a ) in addition to an independent claim for a product, an independent claim for a process specially adapted for the manufacture of the product, and an independent claim for a use of the product; or
( b ) in addition to an independent claim for a process, an independent claim for an apparatus or means specifically designed for carrying out the process; or
( c ) in addition to an independent claim for a product, an independent claim for a process specially adapted for the manufacture of the product, and an independent claim for an apparatus or means specifically designed for carrying out the process.
18 Prescribed period in relation to late or non-filing of drawings.
18. The period prescribed for the purposes of section 23 (3) and (4) shall be one month calculated from the date on which the Office sends out notification to the applicant that the drawing has been filed later than the date which is, by virtue of section 23 (1), to be treated as the date of filing of the application or, as the case may be, that it has not been filed.
19 Prescribed period for filing claims and abstract.
19. (1) The period prescribed for filing the claims and abstract for the purposes of section 23 (5) shall be twelve months from the date of filing or, if priority has been claimed, from the date of priority.
- (2) Where a divisional application is filed, or a new application is filed under section 81, after the end of the period of twelve months prescribed in paragraph (1), the requirements of that provision shall be complied with at the actual filing date of the divisional or new application as the case may be.
20 Provisions as to divisional applications.
20. (1) A divisional application within the meaning of section 24 may be filed—
( a ) in a case where the divisional application is filed after the earlier application has been amended under the provisions of section 29 (4), section 30 (4) or (5) or section 32, within two months of such amendment; and
( b ) in a case which does not fall within (a) of this paragraph, at any time after filing of the earlier application;
provided that a divisional application may not be filed after the earlier application has been refused, is withdrawn, is deemed to be withdrawn or after the applicant has been requested to pay the fee for the grant of a patent in respect of the invention to which that application relates.
- (2) Where possible, the description and drawings of the earlier application and the divisional application shall relate only to the matter for which protection is sought by each such application respectively. However, when it is necessary for an application to describe the matter for which protection is sought by another application, it shall include a reference by number to that other application.
21 Priority period.
21. (1) A period of 12 months, commencing on the day following the date of filing of the previous application whose priority is claimed, is hereby prescribed for the purpose of section 25 (1).
- (2) If an application which claims the priority of a previous application is filed later than the period referred to in paragraph 1, the right of priority shall be lost unless—
( a ) the application is filed not later than 14 months from the date of filing of the earlier application and is accompanied by the prescribed additional fee; and
( b ) the applicant satisfies the Controller by evidence that, despite all due care, the application could not have been filed within the period referred to in paragraph (1).
22 Declaration of priority and priority documents.
22. (1) The declaration of priority based on a previous application referred to in section 26 (1) shall be made in Form No. 1 and shall indicate the date of the previous filing, the state in or for which it was made and the file number, if available.
- (2) A copy of the previous application as referred to in section 26 (1) shall be filed before the end of the sixteenth month after the date of priority; provided that this period may be extended by a period not exceeding one month on a request made to the Controller before the expiry of the extension period, accompanied by the prescribed fee. The copy must be certified as an exact copy of the previous application (by the authority which received the previous application) or otherwise verified to the satisfaction of the Controller, and shall be accompanied by a certificate issued by that authority stating the date of filing of the previous application.
- (3) Where a translation of the previous application is required under section 26 (1) the translation must be filed within twenty one months after the date of priority.
- (4) Where the previous application is an application under the Act or under the Act of 1964 or an international application for a patent designating the State which is filed at the Office, the applicant may, instead of filing a copy of the previous application, request the Controller, before the end of the time limit mentioned in paragraph (3), to include such a copy with the patent application upon payment of the prescribed fee.
- (5) Where a divisional application or a new application under section 81 is filed after the period of sixteen months referred to in paragraph (2) the requirements of paragraph (2) shall be complied with at the actual filing date of the divisional or new application as the case may be, and where such an application is filed after the period prescribed in paragraph (3), the provisions of that latter paragraph shall similarly be complied with at the actual filing date of the application in question.
- (6) In the case of an application which is an application for a European patent designating the State which, by virtue of section 122 is to be treated as an application for a patent under the Act, the requirements of paragraphs (1) to (4) shall be treated as having been complied with to the extent that the requirements of rule 38 (1) to (3) of the Implementing Regulations to the European Patent Convention have been fulfilled.
23 Publication of application.
23. (1) The application as published in accordance with section 28 shall include the description, claims, drawings and abstract as filed. If before the termination of the technical preparations for publication of the application the claims have been amended pursuant to Rule 31, the new or amended claims shall be included in the publication in addition to the original claims.
- (2) The application as published shall where possible include the statement as to inventorship referred to in section 17 (2) and, if priority is claimed, the copy of the previous application referred to in section 26 (1). If these documents, including any necessary translations, are not published with the application, they shall be published as soon as practicable thereafter.
- (3) The Controller may determine when the technical preparations for publication of the application are to be treated as having been completed.
Rules for Part II, Chapter IV of the Act.
24 Request for search.
24. (1) The request to the Controller by the applicant to cause a search to be undertaken under section 29 (1) shall be accompanied by the prescribed fee and shall be submitted not later than twenty one months from the date of filing of the application or, if priority has been claimed, from the date of priority; provided that where the application is a divisional application filed on or after the expiry of twenty one months from the date of filing (or date of priority as the case may be) of the earlier application, the request to the Controller to cause a search to be undertaken shall be submitted on the actual filing date of the divisional application.
- (2) The search shall be conducted and the search report prepared in accordance with arrangements made for that purpose approved by the Minister.
- (3) If, under the provisions of section 29 (2), the applicant wishes that a search be carried out in relation to an additional invention he shall submit a request to that effect to the Controller, accompanied by the prescribed fee. The request shall be submitted within one month of the date of issue by the Controller to the applicant of the copy of the search report relating to the first invention.
- (4) Within two months of the date of issue by the Controller to the applicant of a copy of a search report the applicant shall notify the Controller if he wishes to withdraw the application; and if the application is not so withdrawn the Controller shall publish the report.
- (5) Within four months of the date of issue by the Controller to the applicant of a copy of a search report the applicant shall, unless the application is withdrawn, comply with the requirements of section 29 (4).
25 Corresponding applications abroad.
25. Where so requested by the Controller under section 30 (2), the applicant shall, within a period of six months from the request, furnish a statement of all the foreign countries, if any, in which applications for protection for the invention, which is the subject of the patent application, have been made (including applications under conventions or treaties), together with a copy of the report showing the result of any search made in relation to such applications. Within the same period the applicant shall also, where so requested by the Controller, furnish a statement as to whether such applications are still pending, have been accepted, are withdrawn or deemed to have been withdrawn or have been refused.
26 Prescribed states, etc.
26. The following states namely the United Kingdom and Germany and the European Patent Convention and the Patent Co-operation Treaty are hereby prescribed for the purpose of the statement referred to in section 30 (1).
27 Evidence under section 30.
27. (1) The evidence referred to in section 30 (1) in relation to the invention for which a patent is sought shall be either—
( a ) where an application for a patent is also made under the provisions of the European Patent Convention, a copy of the published European patent application and the related European Search Report or a copy of the published specification of the granted European patent in respect of the said invention; or
( b ) where an application for a patent is also made under the provisions of the Treaty, a copy of the published International Application and the related International Search Report in respect of the said invention; or
( c ) where an application for a patent is also made to the United Kingdom Patent Office, a copy of the published application for the patent and the related search report or a copy of the published specification of the granted patent in respect of the said invention; or
( d ) where an application for a patent is also made to the Deutsches Patentamt, a copy of the published application for the patent and the related search report or a copy of the published specification of the granted patent [Patentschrift] in respect of the said invention; or
( e ) where an application for a patent is also made to the Patent Office (or other authority competent for the grant of patents) of a state on whose behalf such applications are the subject of searches carried out by the European Patent Office, a copy of the published application for the patent and the search report thereon prepared by the European Patent Office.
- (2) On submitting evidence the applicant shall pay the prescribed fee.
- (3) The time for submitting evidence shall be—
( a ) in the case of the evidence referred to in paragraph (1) (a), within two months of the publication of the search report or of the specification,
( b ) in the case of the evidence referred to in paragraph (1) (b), within two months of publication of the search report,
( c ) in the case of the evidence referred to in paragraph (1) (c), within two months of the publication of the application or of the receipt by the applicant of the search report (whichever is the later), or within two months of the publication of the specification,
( d ) in the case of the evidence referred to in paragraph (1) (d), within two months of the publication of the search report or of the specification,
( e ) in the case of the evidence referred to in paragraph (1) (e), within two months of the publication of the search report;
provided that where the application is a divisional application, the evidence shall be submitted on the actual filing date of that application if it has already been published before that date.
- (4) The Controller may grant an extension of the time prescribed in paragraph (3) if a request for such extension, accompanied by the prescribed fee, is made at any time within the extended period specified in the request.
28 Amendment following evidence.
28. (1) Within two months of the date the Controller receives evidence under Rule 27 the applicant shall notify the Controller if he wishes to withdraw the application; and if the application is not so withdrawn the Controller shall publish the evidence.
- (2) Following receipt by him of evidence under Rule 27 the Controller, unless the application is withdrawn, shall notify the applicant that the provisions of section 30 (4) or (5) as appropriate shall be complied with within four months of the date of the notification.
- (3) Any amendment or statement under section 29 (4) or section 30 (4) and (5) shall be submitted by a duly authorized patent agent. The agent shall submit a statement that no amendment to the application is considered necessary or that amendments (details of which must accompany the statement) are required, whichever if appropriate.
29 Period for payment of fee for grant.
29. The period referred to in section 31 (3) for payment ofthe fee for grant of a patent shall be four months from the date of the request to pay the said fee; provided that this period may be extended for a further period of three months if a request for such extension accompanied by the prescribed additional fee is made at any time within the extended period specified in the request.
30 Amendment of request for grant.
30. An application under section 32 to amend the request for the grant of a patent shall state the number and date of the patent application and the reasons for desiring to amend the request, and shall be accompaniaed by a copy of the original request showing the desired amendment in red ink and by the prescribed fee. The Controller may call for such evidence in support of the amendment as he may require.
31 Amendment of description, claims or drawings.
31. (1) Before the time for making any amendments provided for under sections 29 and 30 the applicant may, under section 32, amend once the description, claims and drawings of his own volition.
- (2) After making any amendments under sections 29 and 30 or, if no amendments are made in accordance with the provisions of these sections, after the time within which such amendments could have been made has expired, any amendment to the description, claims or drawings which the applicant desires to make of his own volition may only be made with the consent of the Controller following the filing of an application for leave to amend.
- (3) Requests to amend under paragraphs (1) and (2) shall state the reasons for desiring the amendment, and shall be accompanied by a copy of the description, claims or drawings, as the case may be, showing the desired amendment in red ink and by the prescribed fee.
- (4) If required by the Controller, the applicant shall file a new specification or drawings following amendments made under paragraphs (1) and (2), or under sections 29 and 30, and such specification or drawings shall be prepared in accordance with Rules 10, 11, 12 and 15.
- (5) The description,claims or drawings may not be amended by the applicant of his own volition except as provided in paragraphs (1) to (4).
32 Certificate of grant.
32. A certificate of grant of a patent, in Form No. 3, shall be issued to the applicant upon grant.
33 Application renewal fee.
33. (1) The prescribed application renewal fee shall be due in respect of each year that an application is pending following the expiry of the second year from the date of filing of the application and shall be payable on or before the last day of the month in which such year commences.
- (2) A renewal fee may not be validly paid more than four months before the date on which it falls due.
- (3) When a renewal fee has been paid in compliance with the provisions of section 35 and this Rule the Controller shall issue a certificate that the fee has been duly paid.
- (4) Where a divisional application is filed after the expiration of the second or any succeeding year from the date of filing of the earlier application, the renewal fee due in respect of any such year or years (on the basis that such application is deemed to have been filed on the date of filing of the earlier application) shall be paid at the time such application is filed.
Rules for Part II, Chapter V of the Act.
34 Patent renewal fees.
34. (1) Patent renewal fees shall be due annually commencing with the fee prescribed in respect of the third year from the date of filing of the patent application.
- (2) The prescribed fee in respect of each year shall be payable on or before the last day of the month in which that year commences; provided that where the certificate of grant of a patent is issued after the expiration of the second or any succeeding year the renewal fee or fees due in respect of any such year or years (less the amount of the fee paid under the immediately preceding Rule in respect of any such year or years) may be paid at any time within three months from the date of issue of the certificate of grant; provided also that in the case of a European patent designating the State, renewal fees shall only be payable in respect of the years which follow that in which the mentionn of the grant of that patent is published in the European Patent Bulletin and where a renewal fee is due within two months of such publication it may be paid within those two months.
- (3) A renewal fee may not be validly paid more than four months before the date on which in falls due. Form No. 4, duly completed, shall be filed with the payment.
- (4) On due compliance with the terms of the preceding paragraphs, the Controller shall issue a certificate that the prescribed payment has been duly made.
- (5) Where the period for payment of a renewal fee pursuant to paragraphs (1) and (2) has expired, the Controller shall, not later than six weeks after the last day for payment under those paragraphs and if the fee still remains unpaid, send to the proprietor of the patent a notice reminding him that payment is overdue and of the consequences of non-payment.
- (6) The notice under paragraph (5) shall be sent to the address for service as notified in accordance with Rule 92.
35 Application for restoration.
35. (1) An application under section 37 for restoration of a patent or an application for a patent which has lapsed shall state—
( a ) the name and address of the applicant for restoration and the number of the patent or application in question;
( b ) the amount of the renewal fee due;
( c ) the date by which the fee should have been paid;
( d ) the circumstances which led to the failure to pay the fee,
and shall be accompanied by the prescribed fee and by evidence verifying any statement made in relation to the circumstances referred to in (d).
- (2) If, upon considerationn of the evidence, the Controller is not satisfied that a prima facie case for an order under section 37 has been made out, he shall notify the applicant accordingly and, unless within one month the applicant requests to be heard in the matter, the Controller shall refuse the application.
- (3) If the applicant requests a hearing within the time allowed, the Controller, after giving the applicant an opportunity of being heard, shall determine whether the application may proceed to advertisement or whether it shall be refused.
36 Opposition to the restoration.
36. (1) At any time within two months of the advertisement of the application under section 37 (4) any person may give notice of opposition thereto.
- (2) Such notice shall be furnished in duplicate and shall state—
( a ) the name and address of the opponent;
( b ) the number of the patent or application concerned;
( c ) the ground or grounds upon which restoration is opposed;
and shall be accompanied by the prescribed fee and by a statement in duplicate setting out fully the facts upon which the opponent relies.
- (3) Upon notice of opposition being given the Controller shall send to the opponent a copy of the application and accompanying evidence.
- (4) A copy of the notice and the statement of the opponent shall be sent by the Controller to the applicant.
- (5) Within three months of the receipt of such copies, the applicant shall, if he wishes to continue with his application for restoration, file a counter-statement duplicate setting out fully the grounds upon which the opposition is resisted; and the Controller shall send a copy of the counter-statement to the opponent.
- (6) The Controller may give such directions as he may think fit with regard to the subsequent procedure.
37 Action on restoration.
37. If the Controller decides to restore the patent or patent application he shall notify the applicant accordingly and require him under section 37 (6) to pay the unpaid renewal fees together with the prescribed additional fee.
38 Conditions of restoration.
38. (1) For the protection of a person who between the date the patent or the patent application lapsed and the date of the application for restoration began in good faith to do an act which would constitute an infringement of the patent or of the application if it had been in force or made in good faith effective and serious preparations to do such an act, every order of the Controller restoring a patent or a patent application shall, for the purposes of section 37 (7) (b), have the effect that once the order comes into force, it shall be subject to the conditions that any such person shall have the right—
( a ) to continue to do or, as the case may be, to do that act himself; and
( b ) if it was done or preparations had been made to do it in the course of a business, to assign the right to do it or to transmit that right on his death or, in the case of a body corporate on its dissolution, to any person who acquires that part of the business in the course of which the act was done or preparations had been made to do it, or to authorise it to be done by any partners of his for the time being in that business; and the doing of that act by virtue of this paragraph shall not amount to an infringement of the patent or of the patent application concerned.
- (2) The rights mentioned in paragraph (1) shall not include the right to grant a licence to any person to do an act so mentioned.
- (3) Where a product is disposed of by any person to another in exercise of a right conferred by paragraph (1), that other and any other person claiming through him shall be entitled to deal with the product in the same way as if it had been disposed of by a sole registered proprietor.
39 Amendment of specification of patent.
39. (1) An application under section 38 (1) by the proprietor of a patent for leave to amend the specification of the patent shall be accompanied by the prescribed fee and by a copy of the specification showing the desired amendment in red ink, and shall be advertised by publication of the application and the nature of the proposed amendment in the Journal and in such other manner, if any, as the Controller may direct.
- (2) Any person wishing in accordance with section 38 (5) to oppose an amendment which has been advertised under section 38 (1) or (2), shall, within three months from the date of the advertisement, give notice to the Controller.
- (3) Such notice shall be in duplicate and shall state—
( a ) the name and address of the opponent;
( b ) the number of the specification in question;
( c ) the reasons, in detail, for opposing the amendment;
and shall be accompanied by the prescribed fee and by a statement, in duplicate, setting out fully the facts upon which the opponent relies and the relief which he seeks. A copy of the notice and the statement shall be sent by the Controller to the applicant.
- (4) Within three months of the receipt of such copies, the proprietor shall, if he wishes to contest the opposition, file a counter-statement in duplicate setting out fully the grounds upon which the opposition is contested; and the Controller shall send a copy of the counter-statement to the opponent.
- (5) The Controller may give such directions as he may think fit with regard to the subsequent procedure.
- (6) Where leave to amend a specification is given, the applicant shall, if the Controller so requires and within a time to be fixed by him, file a new specification as amended, which shall be prepared in accordance with Rules 10, 11, 12 and 15.
40 Surrender of patent.
40. (1) Notice to the Controller of an offer to surrender a patent under section 39 shall state—
( a ) the name and address of the proprietor;
( b ) the number of the patent in question;
( c ) the proprietor's reasons for making the offer;
and shall be accompanied by a declaration that no action for infringement or proceeding for the revocation of the patent is pending in any Court.
- (2) The Controller shall advertise the offer in the Journal.
- (3) At any time within three months from the advertisement any person may give notice of opposition to the Controller. Such notice shall be in duplicate and shall state—
( a ) the name and address of the opponent;
( b ) the number of the patent in question;
( c ) the opponent's reasons for opposing surrender;
and shall be accompanied by a statement, in duplicate, setting out fully the facts upon which the opponent relies and the relief which he seeks, and by the prescribed fee.
- (4) The Controller shall send a copy of the notice and of the statement to the proprietor of the patent.
- (5) Within three months of the receipt of such copies, the proprietor of the patent shall, if he wishes to continue with the surrender, file a counter-statement in duplicate setting out fully the grounds upon which the opposition is resisted; and the Controller shall send a copy of the counter-statement to the opponent.
- (6) The Controller may give such directions as he may think fit with regard to the subsequent procedure.
Rules for Part II, Chapter VIII of the Act.
41 Revocation of patent by the Controller.
41. (1) An application to the Controller under section 57 for the revocation of a patent shall be in duplicate and shall be accompanied by a statement in duplicate setting out fully the grounds for revocation, the facts upon which the applicant relies and the relief which he seeks and the prescribed fee. Any documents upon which the applicant relies in support of the application shall be furnished in duplicate with the application.
- (2) The Controller shall send a copy of the application and statement and any supporting document to the proprietor of the patent.
- (3) Within three months of the receipt of such copies, the proprietor of the patent shall, if he wishes to contest the application, file a counter-statement in duplicate setting out fully the grounds upon which the application is contested; and the Controller shall send a copy of the counter-statement to the applicant.
- (4) The applicant may, within three months of the receipt of the copy of the counter-statement, file evidence in support of his case and shall send a copy of the evidence to the proprietor.
- (5) Within three months of the receipt of the copy of the applicant's evidence or, if the applicant does not file any evidence, within three months of the expiration of the time within which such evidence might have been filed, the proprietor of the patent may file evidence in support of his case and shall send a copy of that evidence to the applicant; and, within three months of the receipt of the copy of the proprietor's evidence, the applicant may file further evidence confined to matters strictly in reply and shall send a copy of it to the proprietor.
- (6) No further evidence shall be filed by either party except by leave or direction of the Controller.
- (7) The Controller may give such directions as he may think fit with regard to the subsequent procedure.
42 Award of costs in revocation proceedings.
42. If, in proceedings before the Controller under section 57, the proprietor of a patent offers to surrender it under section 39, the Controller shall, in deciding whether costs should be awarded to the applicant for revocation, consider whether proceedings might have been avoided if the applicant had given reasonable notice to the proprietor before the application was filed.
43 Revocation of patent on Controller's initiative.
43. Where it appears to the Controller in accordance with section 60 (1) or (2) that a patent ought to be revoked, the proprietor of the patent shall be so notified and afforded an opportunity, within a period of three months of such notification, of making observations and of amending the specification of the patent.
Rules for Part III of the Act.
44 Request for grant of short-term patent.
44. The request for the grant of a short-term patent shall be made in Form No. 1.
45 Request for search.
45. (1) A request to the controller under section 66 (1) (a) or (6) shall be accompanied by the fee prescribed under Rule 24 for the purpose of section 29.
- (2) For the purpose of section 66 (6), any person who proves to the satisfaction of the Controller—
- (i) that there are grounds to suspect that the invention, the subject of the short-term patent, is not new or is clearly lacking an inventive step, and
- (ii) that because of the person's legitimate business interests it would, in all the circumstances, be reasonable that a search report be prepared,
may request the Controller to cause a search report to be prepared. The request shall set out fully the nature of the interest of the person making it. The Controller may call for such further information as he may require.
Rules for Part IV of the Act.
46 Application for entry that licences of right are available.
46. An application under section 68 (1) for an entry in the register that licences of right are available shall be accompanied by evidence verifying that the applicant is not precluded by contract from granting licences under the patent and by the prescribed fee.
47 Application for settlement of terms of licence.
47. (1) An application under section 68 (2) for the settlement of the terms of a licence shall be made in duplicate and shall state—
( a ) the name and address of the applicant;
( b ) the number of the patent in question;
( c ) whether the applicant is the proprietor of the patent, the holder of an existing licence, or a person requiring a licence;
( d ) whether an order for the exchange of an existing licence for a licence of right is required;
and shall be accompanied by a statement, in duplicate, setting out fully the facts upon which the applicant relies, and the terms of the licence which he is prepared to accept or grant, and by the prescribed fee.
- (2) A copy of the application and statement shall by sent by the Controller to the proprietor of the patent or the person requiring a licence, as the case may be, who, if he does not agree to the terms set out in the statement, shall, within three months of the receipt of such copies, file a counter-statement in duplicate setting out fully the grounds of his objection and the Controller shall send a copy thereof to the applicant.
- (3) The Controller shall give such directions as he may think fit with regard to the subsequent procedure.
48 Cancellation of licence of right entry.
48. (1) An application under section 69 (1) for the cancellation of an entry shall state the name and address of the applicant and the number of the patent in question, and shall be accompanied by—
( a ) a declaration that there is no existing licence under the patent or that all licensees consent to the application;
( b ) evidence verifying the said declaration;
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