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The Patents Rules 1990

Type Statutory-Instrument

Publication 1990-11-29

State In force

Department Queen's Printer of Acts of Parliament

Source legislation.gov.uk

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(1) The opportunity to be given by the comptroller under subsection (1) or (2) of section 73, to the proprietor of a patent to make observations and to amend the specification of the patent shall be given by the comptroller sending to the proprietor notice informing him that he may make the observations and amend the specification and that, if he wishes to do so, he must do so within three months after the notice is sent to him.

(2) Where the comptroller gives leave under section 73 for the specification of the patent to be amended, he may, before the specification is amended, require the applicant to file a new specification as amended, prepared in accordance with rules 16, 18 and 20.

AMENDMENT OF PATENTS IN INFRINGEMENT OR REVOCATION PROCEEDINGS

Amendment of patent under section 75

78

(1) Where in proceedings before the comptroller a proposed amendment under section 75 is advertised, notice of opposition to such an amendment shall, within the period of two months from the date of advertisement in the Journal, be filed on Patents Form 15/77.

(2) Such notice shall be accompanied by a copy thereof and be supported by a statement in duplicate setting out fully the facts upon which the opponent relies and the relief which he seeks. The comptroller shall send a copy of the notice and statement to the proprietor of the patent and any other party to the proceedings before the comptroller.

(3) The comptroller may give such directions as he may think fit with regard to the subsequent procedure.

(4) Where the comptroller gives leave under section 75 for the specification of the patent to be amended, he may, before the specification is amended, require the applicant to file a new specification as amended, prepared in accordance with rules 16, 18 and 20.

EUROPEAN PATENTS AND PATENT APPLICATIONS AND NATIONAL PROCESSING OF INTERNATIONAL APPLICATIONS

Entries in the register

79

(1) Upon publication of an application for a European patent (UK) under Article 93 of the European Patent Convention, the comptroller shall cause to be entered in the register a copy of every entry which, at the date of such publication, has been made in the Register of European Patents kept under Article 127 of that Convention in respect of that application.

(2) The comptroller shall also cause to be entered in the register in respect of an application for a European patent (UK) which has been published under Article 93 of the Convention copies of any entry made in the Register of European Patents following such publication, provided that an application to that effect is made to the comptroller on Patents Form 39/77, accompanied by a copy of the relevant entry in the Register duly certified to the satisfaction of the comptroller.

European Patents and applications (UK): translations

80

Schedule 4 shall have effect in cases where translations are required by the Act to be filed in connection with applications for, and with, European patents (UK).

Procedure for making request under section 81(2)(b)(i)

81

(1) A request referred to in section 81(2)(b)(i) shall be made on Patents Form 41/77 and the period within which such a request may be made shall be three months from the date on which the applicant is notified by the European Patent Office that his application for a European patent (UK) has been deemed to be withdrawn.

(2) In such a case, the applicant shall file Patents Form 40/77, and, where necessary, a translation in duplicate into English of the application, within a period of two months from the date on which the comptroller receives the request mentioned in paragraph (1) above.

(3) The applicant shall also, within the period referred to in paragraph (2) above, for the purposes of section 15(5)(b), file Patents Form 9/77, and, for the purposes of section 13(2), file Patents Form 7/77.

Procedure where section 81(2)(b)(ii) applies

82

(1) Where section 81(2)(b)(ii) applies, the period within which a request may be transmitted to the comptroller shall be the twenty months calculated from the declared priority date or, where there is no declared priority date, the date of filing of the application for the European patent (UK).

(2) Upon receipt of the request, the comptroller shall notify the applicant thereof and Patents Form 40/77 and, where necessary, a translation in duplicate into English of the application shall be filed by the applicant within the period of four months calculated from the date of the notification.

(3) The applicant shall also, within the period referred to in paragraph (2) above, for the purposes of section 15(5)(b), file Patents Form 9/77 and, for the purposes of section 13(2), file Patents Form 7/77.

Procedure for making request for substantive examination where section 81(2) applies

83

(1) The period within which a request may be made to the comptroller for substantive examination of any application for a patent to which section 81(2) applies shall be two years from the declared priority date or, where there is no declared priority date, the date of filing of the application for the European patent (UK).

(2) The request shall be made on Patents Form 10/77.

(3) Where an application for a European patent (UK) is to be treated as an application for a patent under the Act, the period prescribed for the purposes of sections 18(4) and 20(1) shall be the period which expires four years and six months after the declared priority date, or where there is no declared priority date, the date of filing of the application for the European patent (UK).

Recognition of determinations in proceedings before comptroller

84

Any person seeking recognition in proceedings before the comptroller of a determination by a competent authority of a relevant contracting state other than the United Kingdom of a question to which section 82 applies shall furnish the comptroller with a copy thereof certified as a true copy by an official of the said authority.

International applications for patents: section 89

85

(1) Subject to the provisions of this rule, in relation to an international application for a patent (UK) which is, under section 89, to be treated as an application for a patent under the Act, the prescribed periods for the purposes of section 89A(3) and (5) are—

(a) the period of twenty months calculated from the date which, by virtue of section 89B(1)(b), is to be treated as the declared priority date or, where there is no declared priority date, the date of filing of the international application for a patent (UK); or

(b) in a case where the United Kingdom has been elected in accordance with Chapter II of the Patent Co-operation Treaty—

(i) before the expiry of nineteen months calculated from the declared priority date, the period of thirty months calculated from the declared priority date; or

(ii) where there is no declared priority date and the United Kingdom has been so elected before the expiry of nineteen months calculated from the date of filing of the international application for a patent (UK), the period of thirty months calculated from the date of filing of that international application.

(2) Where, in accordance with paragraph 1 of Schedule 2, the information specified in subparagraph (2)(a)(ii) of that paragraph is added to an international application for a patent (UK), rule 113(1) shall not apply in respect of that information; and where the translation of the information, the filing of which is required to satisfy the relevant conditions of section 89A(3), has not been filed at the Patent Office before the end of the relevant period referred to in paragraph (1) above,—

(a) the comptroller shall give notice to the applicant at the address furnished by the applicant in accordance with rule 30 requiring the applicant to file the translation within the period of two months commencing on the day on which the notice is sent; and

(b) the relevant period shall be treated in respect of the translation as not expiring until the end of the period specified in the notice given under subparagraph (a) above.

(3) In the case of an international application for a patent (UK),—

(a) rule 5(1) shall not apply if the applicant, on filing the application, states in writing to the receiving office that the invention has been displayed at an international exhibition;

(b) rule 5(2) may be complied with—

(i) where subparagraph (a) of paragraph (1) above applies, at any time before the end of the period of twenty-two months, or

(ii) where subparagraph (b) of paragraph (1) above applies, at any time before the end of the period of thirty-two months,

after the declared priority date or, if there is no declared priority date, the date of filing of the international application for a patent (UK);

(c) rule 6(6) shall have effect with the substitution, for the reference to the period of twenty-one months after the declared priority date, of a reference to the period of twenty-two months after that date;

(d) where the United Kingdom has been elected in accordance with Chapter II of the Patent Co-operation Treaty before the expiry of the nineteenth month after the declared priority date, rule 6(6) shall have effect with the substitution, for the reference to the period of twenty-one months after the declared priority date, of a reference to the period of thirty-two months after that date; and

(e) where a translation into English of a document or part of a document is required by the Act or these Rules to be filed—

(i) before the end of the relevant period referred to in paragraph (1)(a) above, verification of the translation, as required by rule 113(1), may be given to the comptroller at any time before the end of the period of twenty-two months, or

(ii) before the end of the relevant period referred to in paragraph (1)(b) above, verification of the translation, as required by rule 113(1), may be given to the comptroller at any time before the end of the period of thirty-two months,

after the declared priority date or, if there is no declared priority date, the date of filing of the international application for a patent (UK).

(4) Where the relevant period referred to in paragraph (1) above has been extended under rule 100 or rule 110 so as to expire later than one month before the end of a period prescribed by paragraph (3) above or (7) below, paragraphs (3) above and (7) below shall have effect with the substitution for the period so prescribed of a period ending one month later than the relevant period referred to in paragraph (1) above as so extended.

(5) For the purposes of section 89A(3) and (5), to the extent that the application and any amendment as published under the Patent Co-operation Treaty and any amendment annexed to the international preliminary examination report under Chapter II of the Treaty are not in English, a translation into English of the application as originally filed or, as the case may be, of the application as originally filed and of the amendment is necessary; however, the translation—

(a) shall exclude the request and abstract unless—

(i) the applicant expressly requests the comptroller to proceed earlier than the expiry of the period prescribed in paragraph (1) above; and

(ii) a copy of the application published by the International Bureau has not yet been sent to the Patent Office in accordance with the Treaty; and

(b) shall include any textual matter in the drawings in a form which complies with rule 49.5(d) of the Patent Co-operation Treaty.

(6) The comptroller shall publish any translation supplied in accordance with section 89A(3) or (5) following the filing of Patents Form 43/77 and payment of the prescribed fee.

(7) In the case of an international application for a patent (UK) in respect of which the conditions specified in section 89A(3)(a) are satisfied, the period prescribed—

(a) for the purposes of sections 13(2), 15(5)(b) and 17(1),—

(i) where subparagraph (a) of paragraph (1) above has effect, shall be the period which expires twenty-two months; or

(ii) where subparagraph (b) of paragraph (1) above, has effect, shall be the period which expires thirty-two months; and

(b) for the purposes of section 18(1),—

(i) where subparagraph (a) of paragraph (1) above applies, shall be the period which expires two years; or

(ii) where subparagraph (b) of paragraph (1) above applies, shall be the period which expires thirty-two months,

after the declared priority date or, if there is no declared priority date, the date of filing of the international application for a patent (UK).

(8) Where, in relation to an international application for a patent (UK), the applicant desires that section 89(1) shall not cease to apply to the application by virtue of the operation of section 89(3), application shall be made to the comptroller on Patents Form 44/77, accompanied by a statement of the facts upon which the applicant relies.

(9) An international application for a patent (UK) shall not be treated as withdrawn under the Act if it, or the designation of the United Kingdom in it, is deemed to be withdrawn under the Patent Co-operation Treaty where, in the same or comparable circumstances in relation to an application under the Act (other than an international application)—

(a) the comptroller could have directed that an irregularity be rectified under rule 100 or that an extension be granted under rule 110; and

(b) the comptroller determines that the application would not have been treated as withdrawn under the Act.

(10) Where under section 89(3) an application is not to be treated as withdrawn and the applicant wishes to proceed—

(a) the comptroller may amend any document received by the Patent Office from the receiving office or the International Bureau and alter any period or time which is specified in the Act or these Rules upon such terms (including payment of any appropriate prescribed fee) as he may direct; and

(b) the fee prescribed under section 89A(3) shall not be payable.

(11) Where the applicant satisfies the comptroller that,—

(a) because of an error made by the receiving office, an international application for a patent (UK) has been accorded a date of filing which is not correct; or

(b) the declaration made under Article 8(1) of the Patent Co-operation Treaty has been cancelled or corrected by the receiving office or the International Bureau because of an error made by the office or the Bureau,

the comptroller may amend any document received by the Patent Office from the receiving office or the International Bureau or alter any period or time which is specified in the Act or these Rules as if the error were an error on the part of the Patent Office.

(12) Where—

(a) an international application for a patent (UK) purports to designate the United Kingdom; and

(b) the applicant alleges that he has been refused a filing date under the said Treaty on account of an error or omission in any institution having functions under the said Treaty,

the applicant may apply to the comptroller for it to be treated as an application under the Act by filing Patents Form 44/77, accompanied by a statement of the facts upon which he relies; and the comptroller may amend any document filed by the applicant and alter any period or time which is specified in the Act or these Rules upon such terms as he may direct.

(13) In this rule “receiving office” has the same meaning as in the Patent Co-operation Treaty.

Obtaining evidence for proceedings under European Patent Convention

86

(1) An application to the comptroller under section 1 of the Evidence (Proceedings in Other Jurisdictions) Act 1975[^f00006], as applied by section 92 of the Act, for an order for evidence to be obtained in the United Kingdom shall be made ex parte on Patents Form 45/77 and shall be accompanied by an affidavit made by a person duly authorised in that behalf by the relevant convention court, evidencing that the request is made in pursuance of a request issued by or on behalf of that court and that the evidence to which the application relates is to be obtained for the purposes of civil proceedings before it.

(2) After such an application as is mentioned in paragraph (1) above has been made, an ex parte application for a further order or directions in relation to the same matter may be made to the comptroller in writing.

(3) The comptroller may allow an officer of the European Patent Office to attend the hearing of such an application as is mentioned in paragraph (1) above and examine the witnesses or request the comptroller to put specified questions to them.

Communication of information to European Patent Office

87

The comptroller may authorise the communication to the European Patent Office or the competent authority of any country which is party to the European Patent Convention of such information in the files of the Patent Office as may be disclosed in accordance with section 118 and rule 93.

HEARINGS, AGENTS AND CORRECTION OF ERRORS

Comptroller’s discretionary powers

88

(1) Before exercising any discretionary power vested in him by or under the Act adversely to any party to a proceeding before him, the comptroller shall, unless the party concerned consents to shorter notice, give that party at least fourteen days' notice of the time when he may be heard.

(2) If, in inter partes proceedings, a party desires to be heard, he shall give notice in writing to the comptroller; and the comptroller may refuse to hear any party who has not given such notice before the day appointed for the hearing.

(3) In inter partes proceedings, any party who intends to refer at the hearing to any document (other than a report of a decision of any court or of the comptroller) not already mentioned in the proceedings shall, unless the comptroller consents and the other party agrees, give at least fourteen days' notice of his intention with details of, or a copy of, the document to the comptroller and the other party.

(4) After hearing the party or parties desiring to be heard or, if no party so desires, without a hearing, the comptroller shall decide the matter and shall notify all parties of his decision and, if any party so desires, shall give his reasons for the decision.

Admittance to hearings before comptroller

89

(1) Subject to the following provisions of this rule, where a hearing before the comptroller of any dispute between two or more parties relating to any matter in connection with a patent or an application for a patent takes place after the publication of the application under section 16, the hearing of the dispute shall be in public.

(2) After consulting those parties to the dispute who appear in person or are represented at a hearing to which paragraph (1) above applies, the comptroller may direct that the hearing be not held in public, but without prejudice to paragraph (3) below.

(3) A member of the Council on Tribunals or of its Scottish Committee may, in his capacity as such, attend such a hearing or any other hearing before the comptroller under these Rules.

Agents

90

(1) Unless the comptroller otherwise directs in any particular case—

(a) all attendances upon him may be made by or through an agent; and

(b) every notice, application or other document filed under the Act may be signed by an agent.

(2) Where after a person has become a party to proceedings before the comptroller he appoints an agent for the first time or appoints one agent in substitution for another, the newly appointed agent shall file Patents Form 51/77 in duplicate on or before the first occasion when he acts as agent.

Correction of errors in patents and applications

91

(1) Except where rule 45(3) or paragraph 4 of Schedule 4 has effect, a request for the correction of an error of translation or transcription or of a clerical error or mistake in any specification of a patent, in an application for a patent or in any document filed in connection with a patent or such an application shall be made on Patents Form 47/77 and shall be accompanied by a document clearly identifying the proposed correction; and the comptroller may, if he thinks fit, require that the correction be shown on a copy of the document of which correction is sought.

(2) Where such a request relates to a specification, no correction shall be made therein unless the correction is obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as the correction.

(3) Where the comptroller requires notice of the proposed correction to be advertised, the advertisement shall be made by publication of the request and the nature of the proposed correction in the Journal and in such other manner (if any) as the comptroller may direct.

(4) Any person may, at any time within two months after the date of the advertisement, give notice to the comptroller of opposition to the request on Patents Form 48/77.

(5) Such notice shall be accompanied by a copy thereof and be supported by a statement in duplicate setting out fully the facts on which the opponent relies and the relief which he seeks. The comptroller shall send a copy of the notice and the statement to the person making the request who, if he desires to proceed with the request, shall within the period of two months beginning on the date when the copies are sent to him, file a counter-statement in duplicate setting out fully the grounds on which he contests the opposition and the comptroller shall send a copy of the counter-statement to the opponent.

(6) The comptroller may give such directions as he may think fit with regard to the subsequent procedure.

INFORMATION AND INSPECTION

Request for information under section 118

92

(1) A request under section 118 for information relating to any patent or application for a patent may be made—

(a) as to when a request for substantive examination has been filed or the prescribed period for doing so has expired without the request having been filed;

(b) as to when the specification of a patent or application for a patent has been published;

(c) as to when an application for a patent has been withdrawn, has been taken to be withdrawn, has been treated as having been withdrawn, has been refused or has been treated as having been refused;

(d) as to when a renewal fee has not been paid within the period prescribed for the purposes of section 25(3);

(e) as to when a renewal fee has been paid within the period of six months referred to in section 25(4);

(f) as to when a patent has ceased to have effect and/or an application for restoration of a patent has been filed;

(g) as to when an entry has been made in the register or an application has been made for the making of such entry;

(h) as to when any application or request is made or action taken involving an entry in the register or advertisement in the Journal, if the nature of the application, request or action is specified in the request; and

(i) as to when any document may be inspected in accordance with the provisions of rule 93 or 94.

(2) As regards information relating to any existing patent or existing application for a patent, a request may also be made—

(a) as to when a complete specification following a provisional specification has been filed or when the period of fifteen months from the date of the application has expired and a complete specification has not been filed;

(b) as to when a complete specification is or will be published, or when an application for a patent has become void; and

(3) Any such request shall be made on Patents Form 49/77 and a separate form shall be used in respect of each item of information required.

(4) In this rule, “existing patent” means a patent mentioned in section 127(2)(a) and (c) and “existing application” means an application mentioned in section 127(2)(b).

Inspection of documents under section 118

93

(1) Subject to paragraph (5) below, and to the restrictions prescribed in paragraph (4) below, after the date of publication of an application for a patent in accordance with section 16, the comptroller shall, upon request made on Patents Form 23/77 and payment of the appropriate prescribed fee, permit all documents filed or kept at the Patent Office in relation to the application or any patent granted in pursuance of it, to be inspected at the Patent Office.

(2) Subject to the same restrictions and to rule 96, where the circumstances specified in section 118(4) or (5) exist, the comptroller shall, upon request made on Patents Form 23/77, and payment of the appropriate fee, permit inspection of such documents before the publication in accordance with section 16.

(3) Where a declaration has been made in accordance with section 5(2) or 127(4), inspection of any application referred to therein and of any translation thereof shall be permitted upon request under paragraph (1) or (2) above without payment of any fee.

(4) The restrictions referred to in paragraph (1) above are—

(a) that no document shall be open to inspection until fourteen days after it has been filed at the Patent Office;

(b) that documents prepared in the Patent Office solely for use therein shall not be open to inspection;

(c) that any document sent to the Patent Office, at its request or otherwise, for inspection and subsequent return to the sender, shall not be open to inspection;

(d) that no document filed at the Patent Office in connection with an application under section 40(1) or (2) or section 41(8) shall be open to inspection unless the comptroller otherwise directs;

(e) that no request made under rule 48, 49(2), 52(2) or 92 or this rule shall be open to inspection; and

(f) that documents in respect of which the comptroller issues directions under rule 94 that they are to be treated as confidential shall not be open to inspection, save as permitted in accordance with that rule.

(5) Nothing in this rule shall be construed as imposing on the comptroller any duty of making available for public inspection—

(a) any document or any part of a document—

(i) which in his opinion disparages any person in a way likely to damage him; or

(ii) the publication or exploitation of which would in his opinion be generally expected to encourage offensive, immoral or anti-social behaviour; or

(b) the file (but not the report) of the international preliminary examination of an international application under the Patent Co-operation Treaty; or

(6) No appeal shall lie from a decision of the comptroller under paragraph (5)(a) above not to make a document or part of a document available for public inspection.

Confidential documents

94

(1) Where a document other than a Patents Form is filed at, or sent to, the Patent Office, and the person filing or sending it or any party to the proceedings to which the document relates so requests, giving his reasons, within fourteen days of the filing or sending of the document, the comptroller may direct that it be treated as confidential, and the document shall not be open to public inspection while the matter is being determined by the comptroller.

(2) Where such a direction has been given and not withdrawn, nothing in this rule shall be taken to authorise or require any person to be allowed to inspect the document to which the direction relates except by leave of the comptroller.

(3) The comptroller shall not withdraw any direction given under this rule nor shall he give leave for any person to inspect any document to which a direction which has not been withdrawn relates without prior consultation with the person at whose request the direction was given, unless the comptroller is satisfied that such prior consultation is not reasonably practicable.

(4) Where such a direction is given or withdrawn a record of the fact shall be filed with the document to which it relates.

(5) Where the period referred to in paragraph (1) above is extended under rule 110, the relevant document shall not be, or, if the period is extended after it has expired, shall cease to be, open to public inspection until the expiry of the extended period, and if a request for a direction is made the document shall not be open to public inspection while the matter is being determined by the comptroller.

Bibliographic data for purposes of section 118(3)(b)

95

The following bibliographic data is prescribed for the purposes of section 118(3)(b)—

(a) the number of the application;

(b) the date of filing of the application and, where a declaration has been made under section 5(2) or 127(4), the filing date, country and file number when available of each application referred to in that declaration;

(d) the title of the invention; and

(e) if the application has been withdrawn, has been taken to be withdrawn, has been treated as having been withdrawn, has been refused or is treated as having been refused, that fact.

Request for information where section 118(4) applies

96

(1) Where the circumstances specified in section 118(4) exist, a request under section 118(1) shall be accompanied by a statutory declaration verifying their existence and such documentary evidence (if any) supporting the request as the comptroller may require.

(2) The comptroller shall send a copy of the request, the declaration and the evidence (if any) to the applicant for the patent and shall not comply with the request until the expiry of fourteen days thereafter.

MISCELLANEOUS

Service by post

97

Any notice, application or other document sent to the Patent Office by posting it in the United Kingdom shall be deemed to have been given, made or filed at the time when the letter containing it would be delivered in the ordinary course of post.

Hours of business

98

The Patent Office shall be deemed to be closed at the following hours for the transaction of business of the classes specified—

(a) on weekdays other than Saturdays, at midnight for the filing of applications, forms and other documents, and at 4 pm for all other business; and

(b) on Saturdays, at 1 pm for the filing of new applications for patents in respect of which no declaration for the purposes of section 5(2) or 127(4) is made.

Excluded days

99

(1) The following shall be excluded days for all purposes under the Act—

(a) all Sundays;

(b) Good Friday and Christmas Day;

(c) any day specified as or proclaimed to be a bank holiday in England in or under section 1 of the Banking and Financial Dealings Act 1971[^f00007]; and

(d) any Saturday immediately preceded by one of the above.

(2) Saturdays not falling within paragraph (1) above shall be excluded days for all purposes except the filing of applications in respect of which no declaration for the purposes of section 5(2) is made.

Correction of irregularities

100

(1) Subject to paragraph (2) below, any document filed in any proceedings before the comptroller may, if he thinks fit, be amended, and any irregularity in procedure in or before the Patent Office may be rectified, on such terms as he may direct.

(2) In the case of an irregularity or prospective irregularity—

(a) which consists of a failure to comply with any limitation as to times or periods specified in the Act or the 1949 Act or prescribed in these Rules or the Patents Rules 1968[^f00008] as they continue to apply which has occurred, or appears to the comptroller is likely to occur in the absence of a direction under this rule;

(b) which is attributable wholly or in part to an error, default or omission on the part of the Patent Office; and

the comptroller may direct that the time or period in question shall be altered but not otherwise.

(3) Paragraph (2) above is without prejudice to the comptroller’s power to extend any times or periods under rule 110 or 111.

Dispensation by comptroller

101

Where, under these Rules, any person is required to do any act or thing, or any document or evidence is required to be produced or filed, and it is shown to the satisfaction of the comptroller that from any reasonable cause that person is unable to do that act or thing, or that document or evidence cannot be produced or filed, the comptroller may, upon the production of such evidence and subject to such terms as he thinks fit, dispense with the doing of any such act or thing, or the production or filing of such document or evidence.

Remission of fees

102

(1) The comptroller may remit the whole or part of a search fee in the following cases—

(a) where an international application for a patent (UK) which has already been the subject of a search by the International Searching Authority in accordance with the Patent Co-operation Treaty falls to be treated as an application for a patent under the Act; and

(b) where a new application is filed in accordance with section 15(4) for a patent for an invention in relation to which the applicant has previously paid the search fee in connection with the earlier application referred to in that subsection.

(2) In a case governed by Chapter II of the Patent Co-operation Treaty, the comptroller may remit the whole or part of the fee for the substantive examination of the international application where its preliminary examination has been carried out by the Patent Office acting as the International Preliminary Examining Authority under Article 32 of the said Treaty.

(3) In cases falling within paragraph (1)(b) above the request for remission of the whole or part of the fee shall be made in writing.

(4) No appeal shall lie from any decision of the comptroller under this rule.

Evidence

103

(1) Where under these Rules evidence may be filed, it shall be by statutory declaration or affidavit.

(2) The comptroller may if he thinks fit in any particular case take oral evidence in lieu of or in addition to such evidence and shall allow any witness to be cross-examined on his affidavit or declaration, unless he directs otherwise.

(3) In England and Wales, the comptroller shall, in relation to the giving of evidence (including evidence on oath), the attendance of witnesses and the discovery and production of documents, have all the powers of a judge of the High Court, other than the power to punish summarily for contempt of court.

(4) In Scotland, the comptroller shall, in relation to the giving of evidence (including evidence on oath), have all the powers which a Lord Ordinary of the Court of Session has in an action before him, other than the power to punish summarily for contempt of court, and, in relation to the attendance of witnesses and the recovery and production of documents, have all the powers of the Court of Session.

Statutory declarations and affidavits

104

Any statutory declaration or affidavit filed under the Act or these Rules shall be made and subscribed as follows,—

(a) in the United Kingdom, before any justice of the peace, or any commissioner or other officer authorised by law in any part of the United Kingdom to administer an oath for the purpose of any legal proceedings;

(b) in any other part of Her Majesty’s dominions or in the Republic of Ireland, before any court, judge, justice of the peace, or any officer authorised by law to administer an oath there for the purpose of any legal proceedings; and

(c) elsewhere, before a British Minister, or person exercising the functions of a British Minister, or a Consul, Vice-Consul, or other person exercising the functions of a British Consul, or before a notary public, judge or magistrate.

Admission of documents

105

Any document purporting to have affixed, impressed or subscribed thereto or thereon the seal or signature of any person authorised by the last foregoing rule to take a declaration, in testimony that the declaration was made and subscribed before him, may be admitted by the comptroller without proof of the genuineness of the seal or signature or of the official character of the person or his authority to take the declaration.

Directions as to the furnishing of documents etc

106

At any stage of any proceedings before the comptroller he may direct that such documents, information or evidence as he may require shall be furnished within such period as he may fix.

Supporting statements or evidence

107

(1) Where by virtue of any of the rules mentioned in paragraph (2) of this rule, any notice or application is required to be supported by a statement or evidence, such a statement or evidence shall be filed on, or within fourteen days after, the date on which the notice is given or the application is made.

(2) The rules referred to in paragraph (1) above are rules 40(3), 41(1), 43(3), 64(1), 65(2), 71(2), 78(2) and 91(5).

Proceedings in Scotland

108

(1) Where there is more than one party to the proceedings under section 8, 12, 37, 40(1) or (2), 41(8), 61(3), 71 or 72, any party thereto may request the comptroller to direct that any hearing in such proceedings shall be held in Scotland and—

(a) the comptroller shall so direct in the following cases—

(i) where one party resides in Scotland and all parties to the proceedings agree to a hearing being held there; or

(ii) where all the parties to the proceedings reside in Scotland and one of them requests a hearing there, unless it is shown to the comptroller’s satisfaction that it would be unduly burdensome to any other party to hold the hearing there; and

(b) the comptroller may direct that a hearing be held in Scotland (even where none of the parties resides in Scotland) where one party to the proceedings requests it and the balance of convenience is in favour of holding the hearing there.

(2) A request under paragraph (1) above shall be made in duplicate and shall—

(a) be in writing;

(b) be accompanied by a statement of facts in duplicate setting out the grounds upon which the request is made; and

(c) be filed at any time before the comptroller issues notification to the parties that a hearing has been appointed, or, with the leave of the comptroller, within fourteen days thereafter.

(3) The comptroller, upon a request being made under paragraph (1) above, shall send a copy of the request and the statement to any party to the proceedings who has not indicated that he consents to the request.

(4) Any party or parties to the proceedings having objection to a request made under paragraph (1) above may, within two months after notification of the request is sent to him, file at the Patent Office a counter-statement in duplicate setting out the grounds upon which objection is taken, and the comptroller shall send a copy of the counter-statement to any person who is not party to it.

(5) The comptroller may give such directions as he may think fit with regard to the subsequent procedure.

(6) Where the comptroller, after consideration of a request made under paragraph (1)(a)(ii) or (b) above, is satisfied that any hearing thereon should be held in Scotland, he shall grant the request and issue such directions as shall seem to him appropriate.

(7) No appeal shall lie from any decision of the comptroller under this rule.

Appointment of advisers

109

The comptroller may appoint an adviser to assist him in any proceeding before the comptroller and shall settle the question or instructions to be submitted or given to such adviser.

Alteration of time limits

110

(1) The times or periods prescribed by these Rules for doing any act or taking any proceeding thereunder, other than times or periods prescribed in the provisions mentioned in paragraph (2) below, and subject to paragraphs (3) and (4) below, may be extended by the comptroller if he thinks fit, upon such notice to the parties and upon such terms as he may direct; and such extension may be granted notwithstanding that the time or period for doing such act or taking such proceeding has expired.

(2) The provisions referred to in paragraph (1) above are rules 6(1), 26 (so far as it relates to rule 6(1)), 39(1) and (2), 40(2), 41(1), 43(2), 59(2), 64(1), 65(1), 71(1), 78(1), 81(1), 82(1) and 91(4) and paragraph 4(2) of Schedule 2.

(3) A time or period prescribed in rules 6(2) and (6) (including the period therein prescribed as substituted by rule 85(3)(c) and (d)), 15(1), 23, 25(2) and (3) (except so far as it relates to the filing of claims for the purposes of the application and filing of the abstract), 26 (except so far as it relates to rule 6(1)), 33(2), (3) and (5), 34, 41(4), 81(2) and (3), 82(2) and (3), 83(3) and 85(1) and (7), paragraph (6) below, paragraph 1(3) of Schedule 2 and paragraph 2 of Schedule 4 shall, if not previously extended, be extended for one month upon filing Patents Form 50/77 before the end of that month; and where in any proceedings more than one such time or period expires on the same day (but not otherwise), those times or periods may be extended upon the filing of a single such form.

(4) Without prejudice to paragraph (3) above, a time or period (other than any time or period expiring before 24th March 1987) prescribed in the rules referred to in that paragraph may, upon request made on Patents Form 52/77, be extended or further extended if the comptroller thinks fit, whether or not the time or period (including any extension obtained under paragraph (3) above) has expired; and the comptroller may allow an extension, or further extension, under this paragraph on such terms as he may direct and subject, unless he otherwise directs, to the furnishing of a statutory declaration or affidavit verifying the grounds for the request.

(5) A single request may be made under paragraph (4) above for the extension of more than one time or period in the same proceedings if the extensions are to be made to a common date (but not otherwise).

(6) If on consideration of a request under paragraph (4) above the comptroller decides that the extension requested (or, in a case falling within paragraph (5) above, any or all of the extensions requested) may be granted he shall notify the applicant accordingly and invite him, within two months after the notification is sent to him, to file Patents Form 53/77, upon receipt of which the comptroller shall effect the extension or extensions in accordance with the decision:

Calculation of times or periods

111

(1) Where, on any day, there is—

(a) a general interruption or subsequent dislocation in the postal services of the United Kingdom; or

(b) an event or circumstances causing an interruption in the normal operation of the Patent Office,

the comptroller may certify the day as being one on which there is an “interruption” and, where any period of time specified in the Act or these Rules for the giving, making or filing of any notice, application or other document expires on a day so certified the period shall be extended to the first day next following (not being an excluded day) which is not so certified.

(2) Any certificate of the comptroller given pursuant to this rule shall be posted in the Patent Office.

(3) Where, in or in connection with an application for a patent (“the application in suit”), it is desired to make a declaration specifying for the purposes of section 5(2) an earlier relevant application and the period of twelve months immediately following the date of filing the earlier relevant application ends on a day which is an excluded day for the purposes of section 120, such period shall, if the declaration is made on the first following day on which the Patent Office is open for the transaction of such business, be altered so as to include both the day of filing of the earlier relevant application and the day on which the declaration is made in or in connection with the application in suit.

(4) Where it is desired to make such a declaration and the said period of twelve months immediately following the date of filing the earlier relevant application ends on a day certified under paragraph (1) above as being one on which there is an interruption, the period shall, if the declaration is made on the first day following the end of the interruption, be altered so as to include both the day of filing of the earlier relevant application and the day on which the declaration is made in or in connection with the application in suit.

(5) Where an application for a patent is filed upon the day immediately following a day which is certified under paragraph (1) above as being one on which there is an interruption or which is an excluded day for the purposes of section 120, the period of six months specified in section 2(4) shall be computed from the day following the next preceding day which is neither so certified nor so excluded.

(6) If in any particular case the comptroller is satisfied that the failure to give, make or file any notice, application or other document within—

(a) any period of time specified in the Act or these Rules for such giving, making or filing;

(b) the period of six months following a disclosure of matter constituting an invention falling within paragraph (a), (b) or (c) of section 2(4); or

was wholly or mainly attributable to a failure or undue delay in the postal services in the United Kingdom, the comptroller may, if he thinks fit—

(i) extend the period of time for the giving, making or filing so that it ends on the day of the receipt by the addressee of the notice, application or other document (or, if the day of such receipt is an excluded day, on the first following day which is not an excluded day);

(ii) determine that the period of six months referred to in subparagraph (b) above shall be altered so that it begins on the day of the disclosure and ends on the day of receipt by the Patent Office of the application for the patent (or, if the day of such receipt is an excluded day, on the first following day which is not an excluded day); or

(iii) determine that the period of twelve months referred to in paragraph (3) above shall be altered so as to include both the day of filing of the earlier relevant application and the day on which the declaration specifying that application is received by the Patent Office (or, if the day of such receipt is an excluded day, the first following day which is not an excluded day),

as the case may be, in each case upon such notice to other parties and upon such terms as he may direct.

Copies of documents

112

Where a document, other than a published United Kingdom specification or application, is referred to in any reference, notice, statement, counter-statement or evidence required by the Act or these Rules to be filed at the Patent Office or sent to the comptroller, copies of the document shall be furnished to the Patent Office within the same period as the reference, notice, statement, counter-statement or evidence in which they are first referred to may be filed and in the following number,—

(a) where the document in which they were so referred to had to be filed or sent in duplicate or the original document had to be accompanied by a copy thereof, in duplicate; and

(b) in all other cases, one:

Translations

113

(1) Subject to the provisions of rules 6, 40, 81, 82 and 85, paragraph (3) below and paragraph 5 of Schedule 4, where any document or part of a document which is in a language other than English is filed at the Patent Office or sent to the comptroller in pursuance of the Act or these Rules, it shall be accompanied by a translation into English of the document or that part, verified to the satisfaction of the comptroller as corresponding to the original text. Where the document is or forms part of an application for a patent, the Patent Office shall not, in the absence of such a translation, take any further action in relation to that document, unless the comptroller otherwise directs.

(2) Where more than one copy of that document is required to be so filed or sent, a corresponding number of copies of the translation shall accompany it.

(3) Where any document which, or any part of which, is in a language other than English—

(a) is referred to in a search report drawn up under Article 18 of the Patent Co-operation Treaty; or

(b) is cited in the statement contained in an international preliminary examination report established under Article 35 of that Treaty,

and any such report is filed at the Patent Office in relation to the provisions of section 89A, a translation into English of that document or part verified to the satisfaction of the comptroller as corresponding to the original text thereof shall, if the comptroller so directs, be filed within two months of the date on which such direction is given.

(4) Where proceedings are instituted before the comptroller in relation to a European patent (UK) the specification of which was published in French or German, the party who institutes those proceedings shall furnish to the Patent Office a translation into English of the specification of the patent verified to the satisfaction of the comptroller as corresponding to the original text thereof unless—

(a) such a translation has already been filed under section 77(6); or

(b) the comptroller determines that it is not necessary.

(5) If, in the course of such proceedings, leave is given for the amendment of the specification of the European patent (UK), the party given leave to amend shall furnish to the Patent Office a translation of the amendment into the language in which the specification of the patent was published, verified to the satisfaction of the comptroller as corresponding to the original text thereof.

(6) The comptroller may refuse to accept any translation which is in his opinion inaccurate and thereupon another translation of the document in question verified as aforesaid shall be furnished, together with the appropriate number of copies thereof.

Publication and sale of documents

114

The comptroller may arrange for the publication and sale of copies of specifications and other documents in the Patent Office and of indexes to, and abridgements or abstracts of, such documents.

The Journal

115

(1) The comptroller shall publish a journal containing particulars of applications for patents and other proceedings under the Act and any other information that he may deem to be generally useful or important.

(2) The journal shall be entitled “The Official Journal (Patents)”.

(3) Unless the comptroller otherwise directs, the Journal shall be published weekly.

Reports of cases

116

The comptroller shall from time to time publish reports of—

(a) cases relating to patents, trade marks, registered designs and design right decided by him; and

(b) cases relating to patents (whether under the Act or otherwise), trade marks, registered designs, copyright and design right decided by any court or body (whether in the United Kingdom or elsewhere),

being cases which he considers to be generally useful or important.

INTERNATIONAL APPLICATIONS

Filing of applications

117

(1) Where the Patent Office is the competent receiving office under the Patent Co-operation Treaty, an international application shall be filed at it in English in triplicate.

(2) If less than three copies of the international application are so filed, upon preparation by the Patent Office of the number of copies of it required to bring the total to three, the applicant shall on demand pay to the Patent Office the appropriate charge.

Transmittal, international and search fees

118

(1) Payment of the prescribed transmittal fee and the basic fee referred to in rule 15.1(i) of the Regulations under the Patent Co-operation Treaty shall be made to the Patent Office not later than one month after the date on which the application to which they relate is filed at the Patent Office.

(2) Payment of designation fees referred to in rule 15.1(ii) of the said Regulations shall be made to the Patent Office in the amount provided for in rule 15.2(b) thereof not later than—

(a) one year after the date on which the application to which they relate is filed at the Patent Office in a case in which there is no date to be treated by virtue of section 89B(1)(b) as the declared priority date; and

(b) one month after that date or, if later, one year after the date to be treated by virtue of section 89B(1)(b) as the declared priority date in any other case.

(3) Payment of the search fee referred to in rule 16.1 of the said Regulations shall be made to the Patent Office in the amount fixed by the Administrative Council of the European Patent Organisation and published in the Journal.

Certified copies

119

A request under rule 20.9 of those Regulations for a certified copy of an international application as filed with the Patent Office as receiving office and of any corrections thereto shall be made on Patents Form 24/77 and shall be accompanied by the appropriate fee.

Fees for international preliminary examination

120

Where an applicant makes a demand to the Patent Office, as International Preliminary Examining Authority, for international preliminary examination under Article 31 of the said Treaty, he shall—

(a) in accordance with rule 58 of those Regulations, pay the appropriate prescribed preliminary examination fee;

(b) in accordance with rule 57 of those Regulations, pay the handling fee therein referred to; and

(c) upon request by the Patent Office, pay to it an amount which is the equivalent in sterling of the search fee referred to in rule 118(3).

Additional fees for further inventions

121

Where under rule 68.2 of those Regulations the Patent Office, as International Preliminary Examining Authority, reports to the applicant that the requirement of unity of invention is not complied with and the applicant decides to pay an additional fee in respect of each invention other than the main invention, the additional fee payable to the Patent Office in respect of each invention shall not exceed the appropriate prescribed preliminary examination fee.

Fees to be paid in sterling

122

The fees referred to in rules 118 to 121 shall be paid in sterling.

Transitional provisions and revocations

123

(1) The reference to Schedule 2 to the Patents Rules 1968[^f00009] in paragraph (a) of the proviso to rule 124 of the Patents Rules 1978[^f00010] shall be construed as a reference to that Schedule with the substitution for forms 7, 9, 14 to 21, 23, 32 to 36, 38, 39, 43, 44, 46, 53 to 55, 63 to 65 and 69 of the correspondingly numbered forms in Schedule 5.

(2) In rule 124 of the Patents Rules 1978—

(a) for the words “the Patents Rules 1982” in each place where they occur, there shall be substituted the words “the Patents Rules 1990”;

(b) for paragraph (d) of the proviso to paragraph (1), there shall be substituted—

(d) subject to sub-rule (3) below, rules 30, 39(1) and (3) to (6), 41 to 50, 52, 61 to 66, 68 to 74, 76, 88(1), 90, 92 to 95, 97 to 101, 103 to 108, and 114 to 116 of the Patents Rules 1990 shall apply.

and for the words “in rule 39(1)” in paragraph (4) there shall be substituted the words “in rule 39(1) of the Patents Rules 1990”.

(3) The rules described in column 1 of Schedule 6 are hereby revoked to the extent specified in column 3 thereof.

(4) Where—

(a) immediately before these Rules come into force, any time or period prescribed by the Rules hereby revoked has effect in relation to any act or proceeding and has not expired; and

(b) the corresponding time or period prescribed by these Rules would have expired or would expire earlier,

the time or period prescribed by those Rules and not by these Rules shall apply to that act or proceeding.

SCHEDULE 1 — GENERAL FORMS

SCHEDULE 2 — MICRO-ORGANISMS

Applications

1

(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 one of the conditions set out in subparagraph (2) below is satisfied.

(2) The conditions referred to in subparagraph (1) above are—

(a) a condition that,—

(i) not later than the date of filing of the application, a culture of the micro-organism has been deposited in a depository institution which is able to furnish a sample of the micro-organism; and

(ii) the name of the depository 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 (UK), an application for a European patent (UK) or an international application for a patent (UK) which is treated, by virtue of section 77, 81 or 89 as a patent under the Act, or, as the case may be, an application for a patent under the Act, that the corresponding provisions of the Implementing Regulations to the European Patent Convention or, as the case may require, the Patent Co-operation Treaty have been complied with,

and, where a new deposit is made under paragraph 4 below, a further condition that the applicant or proprietor makes a new deposit in accordance with that paragraph.

(3) Where the information specified in subparagraph (2)(a)(ii) above is not contained in an application for a patent as filed, it shall be added to the application—

(a) before the end of the period of sixteen months after the declared priority date or, where there is no declared priority date, the date of filing of the application;

(b) where, on a request made by the applicant, the comptroller publishes the application before the end of the period prescribed for the purposes of section 16(1), before the date of the request; or

(c) where the comptroller sends notification to the applicant that, in accordance with subsection (4) of section 118, he has received a request by any person for information and inspection of documents under subsection (1) of that section, before the end of one month after his sending to the applicant notification of his receipt of the request,

whichever is the earliest.

(4) The giving of the information specified in subparagraph (2)(a)(ii) above shall constitute the unreserved and irrevocable consent of the applicant to the depository institution with which a culture (including a deposit which is to be treated as having always been available by virtue of paragraph 4(2) below) is from time to time deposited making the culture available on receipt of the comptroller’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) above shall mention any international agreement under which the micro-organism concerned is deposited.

(6) In relation to an application for a patent filed before this paragraph and paragraphs 2, 3 and 4 below come into force, rule 17 of the Patents Rules 1982[^f00011] shall continue to have effect notwithstanding its revocation by rule 123(3) of these Rules.

Availability of cultures

2

(1) Save where paragraph 3 below has effect, a request that the comptroller certify a person as a person to whom a depository 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 118(1) in the circumstances mentioned in paragraph 1(3)(c) above; and

(b) at any later time, to any person,

shall be made on Patents Form 8/77 (which shall be filed in duplicate) together, in the case of a micro-organism of which a culture is deposited under the Budapest Treaty with an international depository authority, with the form provided for by the Regulations under that Treaty.

(2) The comptroller shall send a copy of any form lodged with him under subparagraph (1) above and of his certificate authorising the release of the sample—

(a) to the applicant for, or proprietor of, the patent;

(b) to the depository institution; and

(3) A request under subparagraph (1) above shall comprise, on the part of the person to whom the request relates, undertakings 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,

and—

(i) subject to (iii) below, both undertakings shall have effect during any period before the application for a patent has been withdrawn, has been taken to be withdrawn, has been treated as having been withdrawn, has been refused or is treated as having been refused (including any further period allowed under rule 100 or rule 110(1) or (4) but excluding, where an application is reinstated under either of those rules, the period before it is reinstated);

(ii) if a patent is granted on the application, the undertaking set out in subparagraph (a) above 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 25(4); and

(iii) the undertaking set out in paragraph (b) shall not have effect after the date of publication in the Journal of a notice that the patent has been granted,

and, in this subparagraph, 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.

(4) For the purpose of enabling any act specified in section 55 to be done in relation to the culture for the services of the Crown, the undertakings specified in subparagraph (3) above—

(a) shall not be required from any government department or person authorised in writing by a government department for the purposes of this paragraph; and

(b) shall not have effect in relation to any such person who has already given them.

(5) An undertaking given pursuant to subparagraph (3) above may be varied by way of derogation by agreement between the applicant or proprietor and the person by whom it is given.

(6) Where, in respect of a patent to which the undertaking set out in subparagraph 3(a) has effect,—

(a) an entry is made in the register under section 46 to the effect that licences are to be available as of right; or

(b) a compulsory licence is granted under section 48,

that undertaking shall not have effect to the extent necessary for effect to be given to any such licence.

Availability of cultures to experts

3

(1) Where, before the preparations for publication under section 16 of an application for a patent have been completed, the applicant gives notice to the comptroller on Patents Form 8A/77 of his intention that a sample of the micro-organism should be made available only to an expert, the provisions of this paragraph shall have effect.

(2) The comptroller—

(a) shall publish with the application notice that the provisions of this paragraph have effect; and

(b) notwithstanding paragraph 2 above, shall not, until the patent is granted or the application has been withdrawn, has been taken to be withdrawn, has been treated as having been withdrawn, has been refused or is treated as having been refused, issue any certificate authorising release of a sample otherwise than under this paragraph.

(3) Any person wishing to have a sample of the micro-organism made available (“the requester”)—

(a) shall apply to the comptroller on Patents Form 8B/77 (which shall be filed in duplicate together, in the case of a micro-organism of which a culture is deposited under the Budapest Treaty with an international depository authority, with the form provided for by the Regulations under that Treaty) nominating the person (“the expert”) to whom he wishes the sample to be made available; and

(b) shall at the same time file undertakings by the expert as set out in subparagraph (3) of paragraph 2 above in accordance with the provisions of that paragraph.

(4) The comptroller shall send a copy of Patents Form 8B/77 filed under subparagraph (3) above to the applicant for the patent and shall specify the period within which the applicant may object, in accordance with subparagraph (5) below, to a sample of the micro-organism being made available to the expert.

(5) Unless, within the period specified by the comptroller under subparagraph (4) above (or within such longer period as the comptroller may, on application made to him within that period, allow), the applicant for the patent sends notice in writing to the comptroller that he objects to a sample of the micro-organism being made available to the expert and gives his reasons for his objection, the comptroller shall send a copy of any form lodged with him under subparagraph (3)(a) above and of his certificate authorising the release of the sample—

(a) to the applicant for the patent,

(b) to the depository institution concerned,

(d) to the expert.

(6) Where, in accordance with subparagraph (5) above, the applicant for the patent sends notice to the comptroller of his objection to the issue of a certificate in favour of the expert, the comptroller—

(a) shall decide, having regard to the knowledge, experience and technical qualifications of the expert and to any other factors he considers relevant, whether to issue his certificate in favour of the expert; and

(b) if he decides to authorise the release of the sample to the expert, shall send to the persons referred to in subparagraph (5) above a copy of any form lodged with him under subparagraph (3)(a) above and of his certificate authorising the release of the sample to the expert.

(7) Before making a decision in accordance with subparagraph (6) above, the comptroller shall afford the applicant and the requester the opportunity of being heard.

(8) If the comptroller decides under subparagraph (6) above not to issue his certificate in favour of the expert, the requester may, by notice in writing to the comptroller and the applicant, nominate another person as the expert for the purposes of this paragraph; and the comptroller shall give such directions as he shall think fit with regard to the subsequent procedure.

(9) Nothing in this paragraph shall affect the rights under section 55 of any government department or any person authorised in writing by a government department.

New deposits

4

(1) Where the depository institution with which a deposit or a new deposit of a culture has been made under this Schedule—

(a) notifies the applicant or proprietor that it—

(i) cannot satisfy a request made in accordance with paragraph 2(1) or 3(3) above, 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 depository institution; or

subject to subparagraph (3) below, the applicant or proprietor may, unless the culture has been transferred to another depository institution which is able to make it available, make a new deposit of a culture of that micro-organism.

(2) For the purposes of paragraph 1 above and of this paragraph, the deposit shall be treated as always having been available if, within three months of the receipt of such notification or of the depository institution ceasing to perform the functions of a depository 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 depository 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 19 or section 27, 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 depository institution with which the deposit has been made.

(3) The new deposit referred to in subparagraph (1) above—

(a) shall, save as provided in subparagraph (b) below, be made with the same depository institution as was the original deposit; or

(b) in the cases referred to in subparagraphs (1)(a)(ii), (b) and (c) above, shall be made with another depository institution which is able to satisfy the request.

Interpretation of Schedule

5

(1) In this Schedule—

“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;

and “international depository authority” means a depository institution which has acquired the status of international depository authority as provided in Article 7 of the Budapest Treaty.

(2) For the purposes of this Schedule 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.

SCHEDULE 3 — FORM OF CERTIFICATE OF GRANT OF PATENT

SCHEDULE 4 — EUROPEAN PATENTS AND APPLICATIONS (UK): TRANSLATIONS

Translations of European Patents (UK) filed under section 77(6)

1

(1) A translation filed under section 77(6) shall be filed in duplicate and shall be accompanied by—

(a) Patents Form 54/77 in duplicate, in the case of a translation filed under section 77(6)(a), or

(b) Patents Form 55/77 in duplicate, in the case of a translation filed under section 77(6)(b).

(2) A translation filed under section 77(6) shall comprise a translation of the entirety of the published specification of the patent (including the claims), irrespective of whether a translation of all or any part of the claims contained in the specification has previously been filed under section 78(7) but subject to subparagraph (5) below, and shall include any drawings in the specification, irrespective of whether the drawings contain textual matter.

(3) A translation filed under section 77(6) shall comply with the following requirements as to presentation, subject to subparagraph (4) below in the case of any drawings—

(a) it shall permit of direct reproduction by photography, electrostatic processes, photo-offset and micro-filming, in an unlimited number of copies;

(b) it shall be on A4 paper (29.7 cm × 721 cm) which shall be pliable, strong, white, smooth, matt and durable;

(d) each sheet shall be used with its short sides at the top and bottom (upright position);

(e) the minimum margins shall be—

top	2.0 cm;
left side	2.5 cm
right side	2.0 cm
bottom	2.0 cm;

(f) the margins of the sheets shall be completely blank;

(g) the translation shall be typed or printed in single-line spacing (unless the comptroller otherwise permits), in a dark, indelible colour and in characters of which the capital letters are not less than 0.21 cm high, save that graphic symbols and characters and chemical and mathematical formulae may, instead of being typed or printed, be written or drawn;

(h) the translation shall be reasonably free from extraneous matter and also from deletions and other alterations, overwritings and interlineations and shall, in any event, be legible; and

(i) each sheet (other than a sheet of drawings) shall be numbered consecutively in arabic numerals.

(4) Where a translation including any drawings is filed, the sheets of drawings shall correspond exactly in content and presentation to the sheets of drawings which were published by the European Patent Office, except that—

(a) each sheet shall be numbered consecutively in arabic numerals, as a separate series from that used for the other sheets of the translation, if not so numbered when published by the European Patent Office; and

(b) any textual matter contained in the published drawings shall be replaced with a translation into English.

(5) For the purposes of subparagraph (2) above, the published specification of the patent shall be taken not to include—

(a) anything which does not consist of, or form part of, the description of the invention, the claims or the drawings referred to in the description or the claims;

(b) any claim not having effect in the United Kingdom; or

(c) anything published in a language other than the language of the proceedings (within the meaning of Article 14 of the European Patent Convention).

Periods prescribed under section 77(6)

2

(1) The period prescribed under section 77(6)(a) for filing a translation of the specification of a European patent (UK) and paying the prescribed fee shall be three months from the date of publication of the mention of the grant of the patent in the European Patent Bulletin.

(2) The period prescribed under section 77(6)(b) for filing a translation of the specification as amended of a European patent (UK) and paying the prescribed fee shall be three months from the date of publication by the European Patent Office of the specification of the patent as amended.

Translations of claims of applications for European patents (UK) filed under section 78(7)

3

(1) A translation of the claims of an application for a European Patent (UK),—

(a) in the case of an application which has been published by the European Patent Office, may be filed under subsection (7) of section 78 after the application has been so published; and

(b) in the case of an application which has not been so published but which is the subject of proceedings before the European Patent Office by virtue of Article 150 of the European Patent Convention, may be filed under that subsection after the application has been published under Article 21 of the Patent Co-operation Treaty.

(2) A translation filed by virtue of subparagraph (1) above shall be filed in duplicate and shall be accompanied by Patents Form 56/77, also filed in duplicate.

(3) The translation shall comply with the requirements contained in paragraph 1(3) above.

Corrected translations filed under section 80(3)

4

(1) A corrected translation filed under section 80(3) shall be filed in duplicate.

(2) The corrected translation shall comply with the requirements contained in paragraph 1(3) and (4) above.

(3) Publication of the corrected translation shall be requested on Patents Form 57/77, which shall be filed in duplicate.

(4) The period prescribed under section 80(3) for payment of the prescribed fee shall be fourteen days from the day on which the corrected translation is filed.

Verification of translation

5

A translation shall be verified to the satisfaction of the comptroller as corresponding to the original text of—

(a) the specification, in the case of a translation filed under section 77(6)(a);

(b) the specification as amended, in the case of a translation filed under section 77(6)(b);

(d) the specification of the patent or the claims of the application, as the case may be, in the case of a translation filed under section 80(3),

and if such verification does not accompany the translation when filed it shall be filed within one month of the sending by the comptroller of a written request for such verification.

Inspection of translations

6

A request for inspection of a translation published under section 77(8), 78(7) or 80(3) shall be made on Patents Form 23/77.

SCHEDULE 5 — PATENTS ACT 1949 FORMS

SCHEDULE 6 — REVOCATIONS

(1)	(2)	(3)
Rules revoked	References	Extent of revocation
The Patents Rules 1982	S.I. 1982/717	Subject to rules 39(2) proviso and 62(7) and paragraph 1(6) of Schedule 2, the whole Rules.
The Patents (Amendment) Rules 1983	S.I. 1983/180	The whole rules.
The Patents (Amendment) Rules 1985	S.I. 1985/785	The whole rules.
The Patents (Amendment) (No. 2) Rules 1985	S.I. 1985/1166	The whole rules.
The Patents (Amendment) Rules 1987	S.I. 1987/288	The whole rules except rules 4 and 5.
The Patents (Amendment) Rules 1988	S.I. 1988/2089	The whole rules.
The Patents (Amendment) Rules 1989	S.I. 1989/1116	The whole rules.
The Patents (Amendment) Rules 1990	S.I. 1990/1455	The whole rules.

Signed

Hesketh — Minister of State, — Department of Trade and Industry — 29th November 1990

Explanatory note

(This note is not part of the Rules)

These Rules consolidate, with modifications, the Patents Rules 1982 as amended. In addition to minor and drafting amendments, they make the following changes of substance—

(a) the forms prescribed under the Patents Act 1977 (“the Act”) and the forms remaining under the Patents Act 1949 have been modified (rule 4 and Schedule 1; rule 123(1) and Schedule 5);

(b) modified procedures are provided for references to the comptroller concerning questions about entitlement to patents before grant and determination of rights to patents after grant (rules 7, 8 and 54);

(c) the period within which a person must send a response to a communication in proceedings before the comptroller between parties has been reduced (from three months) to two months from the date when the communication was sent to him (rules 7, 8, 12, 13, 14, 40, 43, 54, 58, 59, 62, 64, 65, 71, 72, 73, 74, 75, 78, 91 and 108);

(d) revised provision is made in relation to applications for patents, and to patents, for inventions which require for their performance the use of micro-organisms (rule 17 and Schedule 2);

(e) any figure of drawings to accompany the abstract must now be indicated on the abstract itself (rule 19);

(f) revised provision is made relating to new applications for patents which derive from earlier applications (rules 24 and 26);

(g) the comptroller is empowered to send copies of documents referred to in the examiner’s reports under sections 17 and 18 of the Act to persons concerned (rules 28, 32 and 33);

(h) a prescribed fee can now be required where a supplementary search under section 17(8) of the Act is necessary (rule 32);

(i) new provision is made relating to the period during which an application for a patent is to be put in order where observations have been made under section 21 of the Act (rule 34);

(j) revised provision is made relating to the manner in which amendments and corrections are to be made in an application for a patent or a patent (rules 35, 36, 40, 47 and 91);

(k) the comptroller is now required to send to the applicant copies of documents received by him relating to observations under section 21 of the Act (rule 37);

(l) revised provision is made for the payment of fees for the renewal of patents (rule 39);

(m) new and additional provision is made for time limits relating to the restoration of lapsed patents (rule 41);

(n) the comptroller may now prevent inspection or copying of documents (or parts of documents) containing offensive or disparaging matter (rules 52 and 93);

(o) modified procedures are provided concerning applications for licences of right (rule 62);

(p) the provisions relating to translations provided in connection with European Patents (UK) and applications therefor are modified (rule 80 and Schedule 4);

(q) a revised time limit is introduced relating to the conversion of a European patent application into an application under the Act (rule 82);

(r) the provisions relating to international applications for patents have been modified (rule 85);

(s) provision is now made for the abridgement, with consent of the person affected, of time limits restraining exercise of the comptroller’s discretion (rule 88);

(t) certain limitations as to times or periods under the Rules may now be extended before they have expired (rule 100);

(u) additional provision is made for the extension of certain new time limits introduced by these Rules (rule 110); and

(v) the requirements concerning translations of documents filed at the Patent Office are modified (rule 113).

At the date of making of these Rules, the address of the Patent Office is State House, 66–71 High Holborn, London WC1R 4TP.

Footnotes

[^f00001]: 1977 c. 37; section 17(8) was added by the Copyright, Designs and Patents Act 1988 (c. 48), section 295 and Schedule 5, paragraph 3; section 28(1) was amended, and section 28(1A) and 2(A) were added, by the said Act of 1988, section 295 and Schedule 5, paragraph 6; section 32 was replaced by the Patents, Designs and Marks Act 1986 (c. 39), section 1 and Schedule 1, paragraph 4; section 77 was amended by the said Act of 1988, section 295 and Schedule 5, paragraphs 8 and 21; section 89 was replaced, and section 89A was inserted by the said Act of 1988, section 295 and Schedule 5, paragraph 25; section 118(3) was amended by the said Act of 1988, section 295 and Schedule 5, paragraph 28; section 123 was amended by the said Act of 1988, section 295 and Schedule 5, paragraph 29; section 125A was added by the said Act of 1988, section 295 and Schedule 5, paragraph 30; paragraph 4(A) of Schedule 1 was added by section 293 of the said Act of 1988.

[^f00002]: 1971 c. 62.

[^f00003]: 1949 c. 87.

[^f00004]: S.I. 1982/717 to which there are no relevant amendments.

[^f00005]: S.I. 1982/717 to which there are no relevant amendments.

[^f00006]: 1975 c. 34.

[^f00007]: 1971 c. 80.

[^f00008]: S.I. 1968/1389, amended by S.I. 1970/955, 1971/1917, 1973/66, 1975/891, 1021 and 1262 and revoked with savings by S.I 1978/216.

[^f00009]: S.I. 1968/1389, amended by S.I. 1970/955, 1971/1917, 1973/66, 1975/891, 1021 and 1262 and revoked with savings by S.I. 1978/216.

[^f00010]: S.I. 1978/216.

[^f00011]: S.I. 1982/717, to which there are no relevant amendments.

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