The Patents Rules 1995

• (5) Within the period of two months after the copy of such evidence is sent to him or, if no such evidence is filed, within two months of the expiration of the time within which it might have been filed, the opponent may file evidence in support of his case and shall send a copy of that evidence to the person making the reference and to those recipients; and within the period of two months after the copy of the opponent’s evidence is sent to him, that person or any of those recipients may file further evidence confined to matters strictly in reply and shall send a copy of it to the persons mentioned in subparagraphs (a) and (b) of paragraph (4) above.

• (6) No further evidence shall be filed by any party except by leave or direction of the comptroller.

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

Applications under section 37(3)

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• (1) An application under section 37(3) for authority to do anything on behalf of a person to whom directions have been given under section 37(2)(d) shall be made on Patents Form 2/77 and shall be accompanied by a copy thereof and a statement in duplicate setting out fully the facts upon which the applicant relies and the nature of the authorisation sought.

• (2) The comptroller shall send a copy of the application and statement to the person alleged to have failed to comply with the directions.

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

Time limit for new application

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Where the comptroller orders that a new application may be made under section 37(4), it shall be made within three months calculated from the day on which the time for appealing from that order expires without an appeal being brought or, where an appeal is brought, from the day on which it is finally disposed of.

Request under section 38(3)

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• (1) Where an order is made under section 37 that a patent shall be transferred to one or more persons none of whom was an old proprietor of it or that a person other than an old proprietor may make a new application for a patent, a request under section 38(3) for the grant of a licence to continue working or, as the case may be, to work the invention shall, in the case of any of the old proprietors, be made within two months, and in the case of a licensee, four months, of his being notified by the comptroller of the making of the order.

• (2) Where such an order is made, the comptroller shall notify the old proprietor or proprietors, and their licensees of whom he is aware, of the making of the order.

Reference to comptroller under section 38(5)

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• (1) Where a question is referred to the comptroller under section 38(5) as to whether any person is entitled to be granted a licence or whether the period or terms of a licence are reasonable, the reference shall be made on Patents Form 2/77 and shall be accompanied by a copy thereof and a statement in duplicate setting out fully the question referred, the facts upon which the person making the reference relies and the terms of the licence which he is prepared to accept or grant.

• (2) The comptroller shall send a copy of the reference and statement to the new proprietor or proprietors and every person claiming to be entitled to be granted a licence, in either case not being the person who makes the reference, and if any recipient does not agree to grant or accept a licence for such period and upon such terms, he shall, within the period of two months beginning on the date when such copies are sent to him, file a counter-statement in duplicate setting out fully the ground of his objection and the comptroller shall send a copy of the counter-statement to the person making the reference.

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

EMPLOYEES' INVENTIONS

Application under section 40 for compensation

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• (1) An application to the comptroller under section 40 for an award of compensation shall be made on Patents Form 2/77 and shall be accompanied by a copy thereof and a statement in duplicate setting out fully the facts relied upon.

• (2) The prescribed period for the purposes of section 40(1) and (2) shall, in relation to proceedings before the comptroller, be that period which begins when the relevant patent is granted and which expires one year after it has ceased to have effect:

• Provided that, where a patent has ceased to have effect by reason of a failure to pay any renewal fee within the period prescribed for the payment thereof and an application for restoration is made to the comptroller under section 28, the said period shall,— if restoration is ordered, continue as if the patent had remained continuously in effect; or if restoration is refused, be treated as expiring one year after the patent ceased to have effect or six months after the refusal, whichever is the later.

• (3) The comptroller shall send a copy of the application and statement to the employer who, if he wishes to contest the application, shall within the period of two months beginning on the date when such copies are sent to him, file a counter-statement in duplicate setting out fully the grounds on which he disputes the employee’s right to the award sought, and the comptroller shall send a copy of the counter-statement to the employee.

• (4) The employee may, within the period of two months beginning on the date when the copy of the counter-statement is sent to him, file evidence in support of his case and shall send a copy of the evidence to the employer.

• (5) Within the period of two months beginning on the date when the copy of the employee’s evidence is sent to him or, if the employee does not file any evidence, within two months of the expiration of the time within which the employee’s evidence might have been filed, the employer may file evidence in support of his case and shall send a copy of the evidence to the employee; and within the period of two months beginning on the date when the copy of the employer’s evidence is sent to him, the employee may file evidence confined to matters strictly in reply and shall send a copy of that evidence to the employer.

• (6) No further evidence shall be filed by either party except by leave or direction of the comptroller.

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

Application under section 41(8) to vary etc awards of compensation

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• (1) Where an award of compensation has been made to an employee under section 40(1) or (2) an application under section 41(8) to vary, discharge, suspend or revive any provision of the order shall be made on Patents Form 2/77 and shall be accompanied by a copy thereof and a statement in duplicate setting out fully the facts relied upon and the relief which is sought.

• (2) Thereafter the provisions of rule 59(3) to (7) shall apply to an application made under section 41(8) by an employee as they apply to an application referred to in that rule and to an application made under section 41(8) by an employer as if references in those paragraphs to the employee were references to the employer and references to the employer were references to the employee.

LICENCES OF RIGHT

Application under section 46(1) for entry in the register

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• (1) An application under section 46(1) shall be made on Patents Form 28/77.

• (2) Every entry made in the register consequent upon such an application shall be published in the Journal.

Application under section 46(3) to settle licences of right

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• (1) An application under section 46(3)(a) or (b) shall be made on Patents Form 2/77 which shall be filed in duplicate together with,—

• (a) in the case of an application under section 46(3)(a) by the proprietor of the patent, two copies of a draft of the licence he proposes and of a statement of the facts he relies on; or

• (b) in the case of an application under section 46(3)(a) by any other person, two copies of a draft of the licence he seeks; and

• (c) where that other person is also an applicant for an order under section 46(3)(b) for the exchange of a licence, two copies of the licence sought to be exchanged.

• (2) The comptroller shall,—

• (a) in the case of an application by the proprietor, send a copy of Patents Form 2/77 and a copy of the documents filed under subparagraph (a) of paragraph (1) above to the person to whom the proprietor proposes to grant the licence; and

• (b) in the case of an application by any other person, send a copy of Patents Form 2/77 and a copy of any documents filed under sub-paragraphs (b) or (c) of that paragraph to the proprietor.

• (3) Within the period of two months beginning on the date when the documents are sent to him under paragraph (2) above,—

• (a) in the case of an application by the proprietor, the person referred to in paragraph (2)(a) above may file a counter-statement setting out fully the grounds of his objection; and

• (b) in the case of an application by any other person, the proprietor may file a statement setting out fully the grounds of his objection,

and, if he does so, at the same time shall send a copy of the statement or counter-statement, as the case may be, to the other party.

• (4) Within the period of two months beginning on the date when a statement under paragraph (3)(b) above is sent to him, the person therein referred to may file a counter-statement; and, if he does so, he shall at the same time send a copy of the counter-statement to the proprietor.

• (5) No further statement or counter-statement shall be served by either party without the leave or direction of the comptroller.

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

Application by proprietor under section 47(1) for cancellation of entry

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An application under section 47(1) shall be—

• (a) made on Patents Form 30/77;

• (b) accompanied by fees to the amount of the balance of all renewal fees which would have been payable if the entry had not been made; and

• (c) advertised by the comptroller in the Journal.

Application under section 47(3)

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• (1) An application under section 47(3) shall be—

• (a) made on Patents Form 2/77 within two months after the making of the relevant entry;

• (b) accompanied by a copy of the application supported by a statement in duplicate setting out fully the nature of the claimant’s interest and the facts upon which he relies; and

• (c) advertised by the comptroller in the Journal.

• (2) The comptroller shall send a copy of the application and statement to the proprietor of the patent.

Opposition to cancellation of entry under section 47

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• (1) Within two months of the date of the advertisement in the Journal of an application under rule 63(c) or 64(1)(c), a person entitled to do so under section 47(6), may give notice to the comptroller of opposition to the application on Patents Form 15/77.

• (2) The notice shall be accompanied by a copy thereof and be supported by a statement in duplicate setting out fully the facts upon which the opponent relies and the relief which he seeks.

• (3) The comptroller shall send a copy of the notice and statement to the applicant for cancellation of the entry who, if he desires to proceed with the application, shall, within the period of two months beginning on the date when such copies are sent to him, file a counter-statement in duplicate setting out fully the grounds on which the opposition is contested and the comptroller shall send a copy of the counter-statement to the opponent.

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

Procedure after cancellation of entry pursuant to section 47(3)

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Where the comptroller cancels an entry in the register pursuant to section 47(3), he shall inform the proprietor of the patent who shall, within such period as the comptroller specifies, pay fees to the amount of the balance of all renewal fees which would have been payable if the entry had not been made.

Declaration under paragraph 4A of Schedule 1 to the Act

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• (1) A declaration under paragraph 4A of Schedule 1 to the Act shall be made on Patents Form 58/77.

• (2) The comptroller shall cause to be entered in the register notice of any declaration filed under the said paragraph 4A and the entry in the register shall be published in the Journal.

COMPULSORY LICENCES

Application under section 48(1) for compulsory licence

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An application under section 48(1) shall be made on Patents Form 2/77 and shall be accompanied by a statement in duplicate of the facts upon which the applicant relies and evidence in duplicate verifying the statement.

Application by Minister under section 51

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An application under section 51(1) for an order or entry under section 51(3) shall be made on Patents Form 2/77 and shall be accompanied by a statement in duplicate of the facts upon which the applicant relies and evidence in duplicate verifying the statement.

Procedure on receipt of application under section 48 or 51

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• (1) If upon consideration of evidence submitted under rule 68 or 69, the comptroller is not satisfied that a prima facie case has been made out for the making of an order or entry, he shall notify the applicant accordingly, and unless, within one month of such notification, the applicant requests to be heard in the matter, the comptroller shall refuse the application.

• (2) Where the applicant requests a hearing within the time allowed, the comptroller, after giving the applicant an opportunity of being heard, shall determine whether the application may proceed or whether it shall be refused.

• (3) If upon consideration of the evidence the comptroller is satisfied that a prima facie case has been made out for the making of the order or entry, or if, after hearing the applicant, he so determines, he shall direct that the application shall be advertised in the Journal and shall send a copy of the application, the statement and the evidence filed in support thereof to the proprietor of the patent and any other person shown on the register as having any right in or under the patent.

Opposition under section 52(1)

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• (1) Within two months of the date of the advertisement in the Journal of an application under rule 70(3), any person may give notice to the comptroller of opposition to the application on Patents Form 15/77.

• (2) The notice shall be accompanied by a copy thereof and be supported by a statement in duplicate setting out fully the facts upon which the opponent relies, and the relief which he seeks, and evidence in duplicate verifying the statement.

• (3) The comptroller shall send a copy of the notice, the statement and the evidence to the applicant who, if he desires to proceed with his application, shall within the period of two months beginning on the date when such copies are sent to him, file evidence in duplicate confined to matters strictly in reply and the comptroller shall send a copy thereof to the opponent.

• (4) No further evidence shall be filed by either party except by leave or direction of the comptroller.

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

INFRINGEMENT PROCEEDINGS BEFORE COMPTROLLER

Procedure on reference to comptroller under section 61(3)

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• (1) A reference to the comptroller under section 61(3) shall be made by the parties to it on Patents Form 2/77, accompanied by a joint statement giving full particulars of the matters which are in dispute and of those on which they are in agreement, and the capacity in which each is a party to the reference.

• (2) The procedure set out in paragraphs (3) to (9) of this rule shall apply unless the only matter stated in the reference to be in dispute is the validity of any patent or part of a patent.

• (3) The party to the dispute who is the proprietor of the patent or an exclusive licensee of the patent (such party being referred to in this and the next following rule as the plaintiff) shall within 14 days of making the reference file a statement in duplicate giving full particulars of his case on the matters in dispute and the relief which he seeks.

• (4) The comptroller shall send a copy of the plaintiff’s statement to the other party to the dispute (referred to in this and the next following rule as the defendant), who shall, within the period of two months beginning on the date when such copy is sent to him, file a counter-statement in duplicate setting out fully the grounds on which he contests the plaintiff’s case and the comptroller shall send a copy of the counter-statement to the plaintiff.

• (5) If the defendant alleges in his counter-statement that the patent or any part of it alleged by the plaintiff to have been infringed is not valid, the plaintiff shall, within the period of two months beginning on the date when the counter-statement is sent to him, file a further statement in duplicate setting out fully the grounds on which he contests the defendant’s allegation; and the comptroller shall send a copy of the further statement to the defendant.

• (6) Subject to such directions as the comptroller may give, the plaintiff may, within the period of two months beginning on the date when the counter-statement is sent to him, or, if he has filed a further statement under paragraph (5) above, within the period of two months thereof, file evidence in support of his case and shall send a copy thereof direct to the defendant.

• (7) Within the period of two months beginning on the date when the copy of the plaintiff’s evidence is sent to him or, if the plaintiff does not file any evidence, within two months of the expiration of the time within which such evidence might have been filed, the defendant may file evidence in support of his case and shall send a copy of it to the plaintiff; and, within the period of two months beginning on the date when the copy of the defendant’s evidence is sent to him, the plaintiff may file further evidence confined to matters strictly in reply and shall send a copy of it direct to the defendant.

• (8) No further evidence shall be filed by either party except by leave or direction of the comptroller.

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

Procedure where validity of patent in dispute

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• (1) Where the only matter stated in the reference made under section 61(3) to be in dispute is the validity of any patent or part of a patent the procedure set out in paragraphs (2) to (7) of this rule shall apply.

• (2) The defendant shall, within 14 days of making the reference, file a statement in duplicate giving full particulars of the grounds on which he alleges that the patent or part of the patent is invalid and the relief which he seeks.

• (3) The comptroller shall send a copy of the defendant’s statement to the plaintiff, who shall, within the period of two months beginning on the date when the copy is sent to him, file a counter-statement in duplicate giving full particulars of the grounds on which he contests the defendant’s allegations, and the comptroller shall send a copy of it to the defendant.

• (4) Subject to such directions as the comptroller may think fit to give, the defendant may, within the period of two months beginning on the date when the copy of the plaintiff’s counter-statement is sent to him, file evidence in support of his case, and shall send a copy of it to the plaintiff.

• (5) Within the period of two months beginning on the date when the copy of the defendant’s evidence is sent to him or, if the defendant does not file any evidence within two months of the expiration of the time within which such evidence might have been filed, the plaintiff may file evidence in support of his case and shall send a copy of it to the defendant; and, within the period of two months beginning on the date when the copy of the plaintiff’s evidence is sent to him, the defendant may file further evidence confined to matters strictly in reply and shall send a copy of it to the plaintiff.

• (6) No further evidence shall be filed by either party except by leave or direction of the comptroller.

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

Procedure on application under section 71

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• (1) An application to the comptroller under section 71 for a declaration that an act does not, or a proposed act would not, constitute an infringement of a patent shall be made on Patents Form 2/77 and shall be accompanied by a copy thereof and a statement in duplicate, setting out fully the facts upon which the applicant relies as showing that subparagraphs (a) and (b) of section 71(1) have been complied with and the relief which he seeks.

• (2) The comptroller shall send a copy of the statement to the proprietor of the patent who shall, if he wishes to contest the application, within the period of two months beginning on the date when the copy is sent to him, file a counter-statement in duplicate setting out fully the ground on which he contests the applicant’s case; and the comptroller shall send a copy thereof to the applicant.

• (3) Subject to such directions as the comptroller may think fit to give, the applicant may, within the period of two months beginning on the date when the copy of the counter-statement is sent to him, file evidence in support of his application and shall send a copy thereof to the proprietor of the patent.

• (4) Within the period of two months beginning on the date when the copy of the applicant’s evidence is sent to him or, if the applicant does not file any evidence, within two 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 the period of two months beginning on the date when the copy of the proprietor’s evidence is sent to him, the applicant may file further evidence confined to matters strictly in reply and shall send a copy of it to the proprietor.

• (5) No further evidence shall be filed by either party except by leave or direction of the comptroller.

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

REVOCATION OF PATENTS

Procedure on application for revocation under section 72

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• (1) An application to the comptroller for the revocation of a patent shall be made on Patents Form 2/77 and shall be accompanied by a copy thereof and a statement in duplicate setting out fully the grounds of revocation, the facts upon which the applicant relies and the relief which he seeks.

• (2) The comptroller shall send a copy of the application and statement to the proprietor of the patent.

• (3) Within the period of two months beginning on the date when such copies are sent to him, the proprietor of the patent shall, if he wishes to contest the application, file a counter-statement in duplicate setting out fully the grounds upon which the application is contested; and the comptroller shall send a copy of the counter-statement to the applicant.

• (4) The applicant may, within the period of two months beginning on the date when the copy of the counter-statement is sent to him, file evidence in support of his case and shall send a copy of the evidence to the proprietor.

• (5) Within the period of two months beginning on the date when the copy of the applicant’s evidence is sent to him or, if the applicant does not file any evidence, within two 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 the period of two months beginning on the date when the copy of the proprietor’s evidence is sent to him, the applicant may file further evidence confined to matters strictly in reply and shall send a copy of it to the proprietor.

• (6) No further evidence shall be filed by either party except by leave or direction of the comptroller.

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

Award of costs

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If, in proceedings before the comptroller under section 72, the proprietor of a patent offers to surrender it under section 29, the comptroller shall, in deciding whether costs should be awarded to the applicant for revocation, consider whether proceedings might have been avoided if the applicant had given reasonable notice to the proprietor before the application was filed.

Revocation and amendment of patents under section 73

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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

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• (1) Where in any proceedings before him, the comptroller requires an amendment proposed under section 75 to be advertised, it shall be advertised in the Journal.

• (2) Within two months of the date on which the proposed amendment is so advertised, any person may give the comptroller notice of opposition to the amendement on Patents Form 15/77.

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

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

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

EUROPEAN PATENTS AND PATENT APPLICATIONS AND NATIONAL PROCESSING OF INTERNATIONAL APPLICATIONS

Entries in the register

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• (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 in writing, accompanied by a copy of the relevant entry in the Register duly certified to the satisfaction of the comptroller and by the prescribed fee, if any.

European patents and applications (UK): translations

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• 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)

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• (1) The request referred to in section 81(2)(b)(i) shall be made in writing within three months of the date on which the applicant is notified by the European Patent Office that his application for a European patent (UK) has been deemed to be withdrawn and shall be accompanied by the said notification and by the prescribed fee, if any.

• (2) At the same time as making the request referred to in paragraph (1) above, the applicant may also request that a copy of the European patent application, together with a copy of the above request, be sent by the comptroller in accordance with relevant provisions of the European Patent Convention to the central industrial property office of any specified Contracting State designated in the application.

• (3) The applicant shall pay the filing fee referred to in section 81(2)(c) for the purposes of section 81(2)(b)(i) within two months of the date on which the comptroller receives the request mentioned in paragraph (1) above.

• (4) The applicant shall also, within the period referred to in paragraph (3) 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

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• (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.

• (3) The applicant shall pay the filing fee and file any necessary translation referred to in section 81(2)(c) for the purpose of section 81(2)(b)(ii) within four months of the date of the notification referred to in paragraph (2).

• (4) The applicant shall also, within the period referred to in paragraph (3) 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

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

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

• (3) The periods prescribed for the purposes of sections 18(4) and 20(1) by paragraphs (1)(a), (1A) (insofar as paragraph (1A) applies to paragraph (1)(a)) and (2) of rule 34 above shall also apply to an application for a European patent (UK) which is to be treated as an application for a patent under the Act, except that any reference to the date of filing of the application in paragraph (1)(a) of the said rule 34 shall be taken to refer to the date of filing of the application for the European patent (UK).

Recognition of determinations in proceedings before comptroller

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

International applications for patents: sections 89 and 89A

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• (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) after the international filing date, rule 113(1) shall not apply in respect of that information; and where the translation of the information, the filing of which is required to satisfy the relevant conditions of section 89A(3), has not been filed at the Patent Office before the end of the 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 sub-paragraph (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 paragraph (5A) below, rule 100 or rule 110 so as to expire later than one month before the end of a period prescribed by paragraph (3) above or (7) below, paragraphs (3) above and (7) below shall have effect with the substitution for the period so prescribed of a period ending one month later than the 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; and,

• (c) where a title has been established by the International Searching Authority under rule 37.2 of the Regulations under the Patent Cooperation Treaty which differs from the title included in the application as originally filed, shall include the former title in place of the latter.

• (5A) Where an applicant is required to file a translation into English both of an application as originally filed and of the amendment to it, in accordance with paragraph (5) above, in order to satisfy the relevant conditions of section 89A(3) and (5) and at the expiry of the relevant period referred to in paragraph (1) above the prescribed fee has been paid and one but not both of the necessary translations has been filed—

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

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

• (6) Payment of the fee prescribed under section 89A(6) shall be accompanied by a request in writing by the applicant for publication under that subsection.

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

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

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

• (ii) where sub-paragraph (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 sub-paragraph (a) of paragraph (1) above applies, shall be the period which expires two years; or

• (ii) where sub-paragraph (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).

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

• (a) for the purposes of section 13(2), shall be the period prescribed by rule 15(1) or two months from the date on which the said conditions are satisfied, whichever expires the later;

• (b) for the purposes of sections 15(5)(b) and 17(1), shall be the period prescribed by rule 25(2) or two months from the date on which the said conditions are satisfied, whichever expires the later; and

• (c) for the purposes of section 18(1), shall be the relevant period prescribed by paragraph (7)(b) above but, where paragraph (7)(b)(i) applies and the application is actually published under section 16, shall be the period prescribed by rule 33(2).

• (8) Where, in relation to an international application for a patent (UK), the applicant desires that section 89(1) shall not cease to apply to the application by virtue of the operation of section 89(3), application in writing to that effect shall be made to the comptroller including a statement of the facts upon which the applicant relies, accompanied by the prescribed fee, if any.

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

• (a) the comptroller could have directed that an irregularity be rectified under rule 100, or could have granted a dispensation for the doing of any act or thing, or the production or filing of any document under rule 101, or could have granted an extension of time under rule 110, or could have extended the time or determined the times or periods under rule 111; and

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

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

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

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

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

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

• (b) the 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 in writing to the comptroller for the international application to be treated as an application under the Act by filing a statement of the facts upon which he relies accompanied by the prescribed fee, if any; and the comptroller may amend any document filed by the applicant and alter any period or time which is specified in the Act or these Rules upon such terms as he may direct.

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

Obtaining evidence for proceedings under European Patent Convention

86

• (1) An application to the comptroller under section 1 of the Evidence (Proceedings in Other Jurisdictions) Act 1975[^f00004], as applied by section 92 of the Act, for an order for evidence to be obtained in the United Kingdom shall be made ex parte in writing and shall be accompanied by—

• (a) an affidavit made by a person duly authorised in that behalf by the relevant convention court, evidencing that the request is made in pursuance of a request issued by or on behalf of that court and that the evidence to which the application relates is to be obtained for the purposes of civil proceedings before it; and

• (b) the prescribed fee, if any.

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

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

Communication of information to European Patent Office

87

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

HEARINGS, AGENTS AND CORRECTION OF ERRORS

Comptroller’s discretionary powers

88

• (1) Before exercising any discretionary power vested in him by or under the Act adversely to any party to a proceeding before him, the comptroller shall, unless 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—

• (a) an agent for the first time, the newly appointed agent shall file Patents Form 51/77 on or before the first occasion when he acts as agent; or

• (b) one agent in substitution for another, the newly appointed agent shall file in duplicate Patents Form 51/77 on or before the first occasion when he acts as agent and the comptroller shall send one copy of the form to the previously appointed agent.

Correction of errors in patents and applications

91

• (1) Except where rule 45(3) or paragraph 4 of Schedule 4 has effect, a request for the correction of an error of translation or transcription or of a clerical error or mistake in any specification of a patent, in an application for a patent or in any document filed in connection with a patent or such an application shall be made on Patents Form 11/77 clearly identifying the proposed correction; and the comptroller may, if he thinks fit, require that the correction be shown on a copy of the document of which correction is sought.

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

• (3) Where the comptroller requires notice of the proposed correction to be advertised, he shall advertise the request and the nature of the proposed correction in the Journal.

• (4) At any time within two months after the date of the advertisement, any person may give notice to the comptroller of opposition to the request on Patents Form 15/77.

• (5) Such notice shall be accompanied by a copy thereof and be supported by a statement in duplicate setting out fully the facts on which the opponent relies and the relief which he seeks.

• (6) The comptroller shall send a copy of the notice and the statement to the person making the request who, if he desires to proceed with the request, shall within the period of two months beginning on the date when the copies are sent to him, file a counter-statement in duplicate setting out fully the grounds on which he contests the opposition and the comptroller shall send a copy of the counter-statement to the opponent.

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

INFORMATION AND INSPECTION

Request for information under section 118

92

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

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

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

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

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

• (e) as to when a renewal fee has been paid within the period 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

• (c) as to when a patent has been sealed or when the time for requesting sealing has expired.

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

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

Inspection of documents under section 118

93

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

• (2) Subject to the same restrictions and to rule 96, where the circumstances specified in section 118(4) or (5) exist, the comptroller shall, upon request and payment of the prescribed fee, if any, permit inspection of such documents before the publication in accordance with section 16.

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

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

• (a) 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;

• (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; and

• (g) that any documents issued by the Patent Office which the comptroller considers should be treated as confidential shall not be open to inspection unless the comptroller otherwise directs.

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

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

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

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

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

• (c) any document filed with or sent to or by the Patent Office before 1st June 1978.

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

Confidential documents

94

• (1) A person filing at, or sending to, the Patent Office, a document other than a Patents Form, or any party to any proceedings to which the document relates, may, within fourteen days of the filing or sending of the document, request the comptroller (giving reasons for the request) to direct that the document or any part of it specified by him be treated as confidential, and the comptroller may, at his discretion, so direct; and while the request is being considered by the comptroller, that document or part thereof (hereinafter referred to as the relevant document) shall not be open to public inspection.

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

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

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

• (5) 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 relevant 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;

• (c) the name of the applicant or applicants;

• (d) the title of the invention; and

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

Request for information where section 118(4) applies

96

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

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

MISCELLANEOUS

Service by post

97

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

Hours of business

98

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[^f00005]; 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[^f00006] as they continue to apply which has occurred, or appears to the comptroller is likely to occur in the absence of a direction under this rule;

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

• (c) which it appears to the comptroller should be rectified,

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

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

Dispensation by comptroller

101

Where, under these Rules, any person is required to do any act or thing, or any document or evidence is required to be produced or filed, and it is shown to the satisfaction of the comptroller that from any reasonable cause that person is unable to do that act or thing, or that 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 a request for remission of the whole or part of the fee shall be made in writing by the applicant to the comptroller.

• (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)(b), 65(2), 71(2), 78(3) and 91(5).

Proceedings in Scotland

108

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

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

• (i) where one party resides in Scotland and all parties to the proceedings agree to the hearing or hearings, if any, being held there; or

• (ii) where all the parties to the proceedings reside in Scotland and one of them requests the hearing or hearings, if any, to be held there and the comptroller is satisfied that it would not be unduly burdensome to any other party to hold the hearing or hearings there; and

• (b) the comptroller may direct that the hearing or hearings, if any, be held in Scotland (even where none of the parties resides in Scotland) where one party to the proceedings requests it and he is satisfied that the balance of convenience is in favour of holding the hearing or hearings there.

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

• (a) be in writing;

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

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

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

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

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

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

Appointment of advisers

109

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

Alteration of time limits

110

• (1) The 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(3) and (4), 82(3) and (4), 83(3) and 85(1), (5A), (7) and (7A), 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 52/77 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.