The Patents Rules 1995

• (4) Without prejudice to paragraph (3) above, a time or period 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.

• (7) Where the period within which any party to a dispute may file evidence under these Rules is to begin after the expiry of any period in which any other party may file evidence under these Rules and that other party notifies the comptroller that he does not wish to file any, or any further, evidence, the comptroller may direct that the period within which the first-mentioned party may file evidence shall begin on such date as may be specified in the direction and shall notify all parties to the dispute of that date.

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

• (c) the period of twelve months referred to in paragraph (3) above,

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:

• Provided that where a copy of any evidence is required by the Act or these Rules to be sent direct to any person, a copy of any document referred to in that document shall also be sent direct to that person.

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 orginal 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— cases relating to patents, trade marks, registered designs and design right decided by him; and 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 and late payment fees

118

• (1) Subject to paragraph (3) below, payment of a prescribed transmittal fee referred to in Rule 14.1 of the Regulations under the Patent Cooperation Treaty shall be made to the Patent Office under the said Treaty not later than one month after the date on which the international application to which it relates is filed at the Patent Office as the competent receiving Office under the said Treaty.

• (2) Where in accordance with Rule 19.4(a) of the said Regulations, an international application is considered to have been received by the Patent Office on behalf of the International Bureau as receiving Office, the transmittal of the application by the Patent Office shall be subject to the payment of a fee as provided by Rule 19.4(b) of the said Regulations.

• (3) Where the Patent Office as the competent receiving Office under the said Treaty issues an invitation pursuant to rule 16 bis.1(a) or rule 16 bis.1(b) of the said Regulations, that invitation shall require the applicant to pay to the Patent Office a late payment fee as provided by Rule 16 bis.2 of the said Regulations.

Certified copies

119

A request under rule 20.9 of the said 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 23/77 and shall be accompanied by the appropriate fee.

Fees to be paid in sterling

120

All fees payable to the Patent Office under the said Treaty in respect of international applications shall be paid in sterling.

Transitional provisions and revocations

121

• (1) The reference to Schedule 2 to the Patents Rules 1968[^f00007] in paragraph (a) of the proviso to rule 124 of the Patents Rules 1978[^f00008] 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 1995”;

• (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 1995 shall apply.

• and

• (c) for the words “in rule 39(1)” in paragraph (4) there shall be substituted the words “in rule 39(1) of the Patents Rules 1995”.

• (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 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 depositary institution which is able to furnish a sample of the micro-organism; and

• (ii) the name of the depositary institution, the date when the culture was deposited and the accession number of the deposit are given in the specification of the application; and

• (b) a condition, in the case of a European patent (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 16 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 depositary 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 7th January 1991, rule 17 of the Patents Rules 1982[^f00009] shall continue to have effect notwithstanding its revocation by rule 123(3) of the Patents Rules 1990[^f00010].

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 depositary institution may make available a sample of a micro-organism,—

• (a) before publication of the application for a patent, to a person who has made a request under section 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 depositary authority, with the form provided for by the Regulations under that Treaty.

• (2) The comptroller shall send copies of the forms 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 depositary institution; and

• (c) to the person making the request.

• (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) Subject to paragraph (2A) below, 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.

• (2A) Where, for the purpose set out in sub-paragraph (1) above, an applicant for an international application for a patent (UK) gives notice in writing to the International Bureau under rule 13bis.3 of the Regulations under the Patent Co-operation Treaty before the technical preparations for international publication of the application are complete of his intention that a sample of the micro-organism should be made available only to an expert, he shall be treated by the comptroller for the purposes of this paragraph as having complied with the conditions in sub-paragraph (1) above and sub-paragraph (2)(a) above shall not apply.

• (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 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 depositary 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 sub-paragraph (3) of paragraph 2 above in accordance with the provisions of that paragraph.

• (4) The comptroller shall send a copy of Patents Form 8/77 filed under sub-paragraph (3) above to the applicant for the patent and shall specify the period within which the applicant may object, in accordance with sub-paragraph (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 sub-paragraph (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 sub-paragraph (3)(a) above and of his certificate authorising the release of the sample—

• (a) to the applicant for the patent,

• (b) to the depositary institution concerned,

• (c) to the requester, and

• (d) to the expert.

• (6) Where, in accordance with sub-paragraph (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 sub-paragraph (5) above a copy of any form lodged with him under sub-paragraph (3)(a) above and of his certificate authorising the release of the sample to the expert.

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

• (8) If the comptroller decides under sub-paragraph (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 depositary 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 depositary institution; or

• (c) ceases for any reason to conduct its activities as a depositary institution in an objective and impartial manner,

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

• (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 depositary institution ceasing to perform the functions of a depositary institution or to conduct its activities as such an institution in an objective and impartial manner, the applicant or proprietor,—

• (a) in a case where the deposit has not already been transferred, makes the new deposit;

• (b) furnishes to the depositary institution with which the new deposit is made a declaration that the culture so deposited is of the same micro-organism as was the culture originally deposited; and

• (c) requests amendment of the specification under section 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 depositary 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 depositary 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 depositary 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 depositary authority” means a depositary institution which has acquired the status of international depositary 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)(a) or (b) shall be filed in duplicate and shall be accompanied by Patents Form 54/77 in duplicate.

• (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 × 21 cm) which shall be pliable, strong, white, smooth, matt and durable;

• (c) each sheet of paper shall be free from cracks, creases and folds and used on one side only;

• (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 54/77, 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 54/77, 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);

• (c) the claims of the specification of the application, in the case of a translation filed under section 78(7); or

• (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.

SCHEDULE 5 — PATENTS ACT 1949 FORMS

SCHEDULE 6 — REVOCATIONS

(1)	(2)	(3)
Rules revoked	References	Extent of revocation
The Patents Rules 1990	S.I. 1990/2384	The whole rules.
The Patents (Amendment) Rules 1992	S.I. 1992/1142	The whole rules.
The Patents (Amendment) Rules 1993	S.I. 1993/2423	The whole rules.

Signed

Richard Page — Minister for Small Business, — Department of Trade and Industry — 3rd August 1995

Explanatory note

(This note is not part of the Rules)

These Rules consolidate, with modifications, the Patents Rules 1990 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”) have been reduced in number and modified (rule 4 and Schedule 1);

• (b) revised provision is made in relation to declarations of priority in the case of new applications under section 15(4) of the Act, and in relation to the documents to be provided in connection with declarations of priority (rule 6);

• (c) revised provision is made in respect of applications to which all parties have consented as to who should be mentioned as the inventor in any patent (rule 14);

• (d) additional provision is made for the voluntary amendment of the description, claims or drawings (rule 36);

• (e) throughout the Rules, provision is made requiring applications and requests to be advertised only in the Journal and uniform procedures are prescribed in respect of opposition to any matter (rules 40, 65, 71, 78 and 91);

• (f) revised provision is made in respect of applications to register transactions, instruments and events (rule 46);

• (g) the provisions concerning applications to settle licences of right have been clarified (rule 62);

• (h) specific provision is made prescribing periods in respect of those international applications for a patent which are to be treated as applications for a patent under the Act and which applications are to proceed earlier in the national phase (rule 85(7A));

• (i) the United Kingdom Patent Office no longer carries out international preliminary examinations under the Patent Co-operation Treaty and the relevant Rules have been omitted accordingly (formerly rules 120 and 121).

A compliance cost assessment is available, copies of which have been placed in the libraries of both Houses of Parliament. Copies of the assessment are also available from the Intellectual Property Policy Directorate of the Patent Office, Room 3/13, Hazlitt House, 45 Southampton Buildings, London WC2A 1AR.

The Rules take effect on 4th September 1995.

At the date of making these Rules the address of the Patent Office is Cardiff Road, Newport, Gwent NP9 1RH and 25 Southampton Buildings, London WC2A 1AY.

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 (2A) 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]: 1992 c. 53.

[^f00003]: 1949 c. 87.

[^f00004]: 1975 c. 34.

[^f00005]: 1971 c. 80.

[^f00006]: S.I. 1968/1389, as amended by S.I. 1970/955, 1971/1917, 1973/66, 1975/891,1021 and 1262, and revoked with savings by S.I. 1978/216.

[^f00007]: S.I. 1968/1389, as amended by S.I. 1970/955, 1971/1917, 1973/66, 1975/891, 1021 and 1262, and revoked with savings by S.I. 1978/216.

[^f00008]: S.I. 1978/216.

[^f00009]: S.I. 1982/717, to which there are no relevant amendments.

[^f00010]: S.I. 1990/2384, to which there are no relevant amendments.