The Patents Rules 2007
SCHEDULE 3 — PROCEEDINGS HEARD BEFORE THE COMPTROLLER
PART 1 — APPLICATIONS, REFERENCES AND REQUESTS
- Patents Act 1977 section 8(1) (reference regarding entitlement in relation to a patent under the Act) section 10 (request for directions for handling a joint application) section 11(5) (reference regarding entitlement to a licence to continue working after transfer of application) section 12(1) (reference regarding entitlement in relation to a foreign or convention patent) section 12(4) (reference involving joint applications on entitlement in relation to a foreign or convention patent) section 13(3) (application to comptroller to remove person mentioned as inventor) section 37(1) (determination of right to patent after grant) section 38(5) (reference regarding entitlement to a licence to continue working after transfer of patent) section 40 (application for compensation by an employee) section 41(8) (application to vary order for compensation for certain inventions) section 46(3) (application to settle terms of licence available as of right) section 47(3) (application to cancel licence available as of right) section 48(1) (application for a compulsory licence) section 50A(2) (application following merger and market investigation) section 51(1) (application by Minister following report of Competition Commission) section 52(2)(a) (application to cancel compulsory licence) section 61(3) (reference on question of infringement before the comptroller) section 71 (declaration of non-infringement) section 72 (application to revoke patent)
- Patents Rules 2007 rule 10(2) (application to be mentioned as inventor) rule 88(1) (application to hold proceedings in Scotland) paragraph 7(4) of Schedule 1 (notice of objection to expert)
- Compulsory Licensing Regulation Article 5(c) of the Compulsory Licensing Regulation (application to terminate EU compulsory licence) Article 6(1) of that Regulation (application for an EU compulsory licence) Article 10(8) of that Regulation (application to access books and records) Article 16(1), second paragraph, of that Regulation (application for a review of an EU compulsory licence) Article 16(4) of that Regulation (application for modification of an EU compulsory licence)
- Medicinal Products Regulation and Plant Protection Products Regulation Article 14(d) of the Medicinal Products Regulation and the Plant Protection Products Regulation (request to review lapse of supplementary protection certificate) Article 15 of those Regulations (application for declaration of invalidity of supplementary protection certificate) Article 15a of the Medicinal Products Regulation (application for revocation of an extension of the duration of a supplementary protection certificate)
PART 2 — OPPOSITIONS WHICH START PROCEEDINGS
- Patents Act 1977 section 27(5) (opposition to amendment of specification after grant) section 29(2) (opposition to surrender of patent) section 47(6) (opposition to cancellation of licence available as of right), where the application was made by the proprietor of the patent section 75(2) (opposition to amendment during infringement or revocation proceedings) section 117(2) (opposition to correction of error in patents and applications)
PART 3 — OPPOSITIONS AFTER PROCEEDINGS HAVE STARTED
- Patents Act 1977 section 47(6) (opposition to cancellation of licence available as of right), where the application was made by a person other than the proprietor of the patent section 52(1) (opposition to an application for compulsory licence or under section 50A or 51) section 52(2)(b) (opposition to an application to cancel a compulsory licence)
PART 4 — RULES WHICH APPLY TO ANY PROCEEDINGS HEARD BEFORE THE COMPTROLLER
- Patents Rules 2007 rule 74 (overriding objective) rule 79 (copies of documents) rule 80(2) to (6) (evidence and the hearing) rule 81 (alteration of time limits) rule 82 (general powers of the comptroller in relation to proceedings before him) rule 84 (hearings in public) rule 87 (evidence in proceedings before the comptroller)
PART 5 — RULES WHICH APPLY TO A REVIEW OF AN OPINION
- Patents Rules 2007 rule 83 (striking out a statement of case and summary judgment) rule 85 (security for costs or expenses) rule 86 (powers of comptroller to compel attendance of witness and production of documents) rule 88 (proceedings in Scotland)
SCHEDULE 4 — EXTENSION OF TIME LIMITS
PART 1 — PERIODS OF TIME THAT CANNOT BE EXTENDED
- rule 6(2)(b) (declaration of priority for the purposes of section 5(2) made after the date of filing)
- rule 7(1) (period for making a request to the comptroller for permission to make a late declaration of priority)
- rule 32(1) (application to reinstate a terminated application)
- rule 40(1) (application to restore a lapsed patent)
- rule 43(4) (application to cancel entry that licence available as of right)
- rule 58(3) (request for a direction under section 81)
- rule 59(1) (request from a foreign industrial property office for a direction under section 81)
- rule 66(3) (period for making a request to the comptroller for permission to make a late declaration of priority in respect of an international application for a patent (UK))
- rule 76(2) (notice of opposition), except in relation to an opposition under section 27(5) where there are pending before the court or the comptroller proceedings in which the validity of the patent is put in issue
- rule 77(8) and (10) (opposition periods)
- rule 104(2) (period for filing an address for service), in relation to an application for a patent
- rule 109 (extension of time limits specified by comptroller)
- rule 116(2) (fee for supplementary protection certificate)
- paragraph 8(5) of Schedule 1 (new deposits of biological material)
PART 2 — PERIODS OF TIME THAT MAY BE EXTENDED UNDER RULE 108(2) OR 108(3)
- rule 8(1) and (2) (filing of information and priority documents)
- rule 10(3) (filing of statement of inventorship and the right to be granted a patent)
- rule 18(1) (missing parts)
- rule 21 (extensions for new applications)
- rule 22(1), (2) and (5) (periods prescribed for the purposes of sections 15(10) and 17(1))
- rule 28(2), (3) and (5) (request for substantive examination)
- rule 30 (period for putting an application in order)
- rule 56(6) and (7) (filing of a translation of European patent (UK) specifications)
- rule 58(4) (request under section 81(2)(b)(i))
- rule 59(3) (request under section 81(2)(b)(ii))
- rule 60 (request for substantive examination following a direction under section 81)
- rule 66(1) and (2) (international applications for patents: entry into national phase)
- rule 68 (international applications for patents: altered prescribed periods)
- paragraph 3(2) of Schedule 1 (filing of information in relation to the deposit of biological matter)
PART 3 — PERIODS OF TIME TO WHICH RULE 108(5) AND 108(7) RELATE
- rule 10(3) (filing of statement of inventorship and the right to be granted a patent)
- rule 12(3) and (9) (filing of name and address and translations)
- rule 19 (new applications filed as mentioned in section 15(9))
- rule 21(1)(a) and (2)(a) (extensions for new applications)
- rule 22 (periods prescribed for the purposes of sections 15(10) and 17(1))
- rule 28 (request for substantive examination)
- rule 30 (period for putting application in order)
- rule 58(4) (request under section 81(2)(b)(i))
- rule 59(3) (request under section 81(2)(b)(ii))
- rule 60 (request for substantive examination following a direction under section 81)
- rule 66(1) and (2) (international applications for patents: entry into national phase)
- rule 68 (international applications for patents: altered prescribed periods)
SCHEDULE 5 — TRANSITIONAL PROVISIONS
Interpretation
1
In this Schedule, the “1995 Rules” means the Patents Rules 1995 as they had effect immediately prior to their revocation by these Rules.
Periods of time
2
Where, in relation to any proceedings under the Act, a period of time prescribed by the 1995 Rules for the purposes of a particular provision of the Act has not expired before the date on which these Rules come into force, that period continues to apply.
Proceedings before the comptroller
3
Proceedings before the comptroller which commenced before these Rules came into force shall continue in accordance with Part 7 of these Rules, subject to paragraph 2 of this Schedule.
Service by post
4
Any document sent to the comptroller by posting it in the United Kingdom before the day these Rules come into force shall be deemed to have been filed at the time when it would be delivered in the ordinary course of post.
Applications to which certain amendments made to the Act by the Regulatory Reform (Patents) Order 2004 do not apply.
5
- (1) This paragraph applies to an application for a patent to which article 20, 21 or 22 of the Regulatory Reform (Patents) Order 2004 applies.
- (2) Any reference in these Rules to—
- (a) section 15(9) of the Act is a reference to section 15(4) of the unamended Act;
- (b) section 15(10)(a) of the Act is a reference to section 15(5)(a) of the unamended Act;
- (c) section 15(10)(b) or (c) of the Act shall be disregarded;
- (d) section 15(10)(d) of the Act is a reference to section 15(5)(b) of the unamended Act;
- (e) section 15A of the Act is a reference to section 17(1) of the unamended Act;
- (f) section 17(1)(c)(i) of the Act is a reference to section 17(1)(a) of the unamended Act; and
- (g) Patents Form 9A is a reference to Patents Form 9.
- (3) The following provisions do not apply—
- rule 6(2) and (3) (declaration of priority made after date of filing);
- rule 7 (permission to make late declaration under section 5(2B));
- rule 12(2), (3), (8) and (9) (notifications of deficiencies in application);
- rule 17 (references under section 15(1)(c)(ii));
- rule 18 (missing parts);
- rule 22(3) (prescribed period for the purpose of section 15(10)(b)(ii)).
- (4) In this paragraph “unamended Act” means the Act as it had effect immediately before the Regulatory Reform (Patents) Order 2004 came into effect.
Security for costs
6
Rule 85 does not apply in respect of proceedings started before 1st October 2005.
Patent applications filed before 7th January 1991
7
- (1) This paragraph applies to an application for a patent filed before 7th January 1991 and to a patent granted in pursuance of such application.
- (2) Schedule 1 has effect with the following modifications.
- (3) In paragraph 2, for the words “involves the use of or concerns biological material” substitute the words “ requires for its performance the use of a micro-organism ”.
- (4) In paragraph 5(3)(b), insert at the beginning the words “ in the case of an undertaking given in accordance with paragraph 1(a), ” and insert at the end the word “ or ” followed by:
(c) in the case of an undertaking given in accordance with paragraph (1)(b), when the patent is granted.
- (5) Any reference to “biological material”—
- (a) in paragraphs 3(1)(a), 4, 5 and 8 is a reference to “culture of the micro-organism”; and
- (b) other than in those provisions, is a reference to “micro-organism”.
- (6) For the purposes of paragraph 3(2) the relevant period is the period of two months beginning immediately after the date of filing of the application for a patent.
- (7) The following provisions do not have effect—
- paragraph 3(3) (defining relevant period);
- paragraph 6 (restriction of availability of biological material to experts);
- paragraph 7 (request for sample to be made available to expert).
Patent applications filed between 7th January 1991 and 27th July 2000
8
- (1) This paragraph applies to an application for a patent filed during the period beginning with 7th January 1991 and ending with 27th July 2000 and to a patent granted in pursuance of such application.
- (2) Schedule 1 to these Rules has effect with the following modifications.
- (3) In paragraph 2, for the words “involves the use of or concerns biological material” substitute the words “ requires for its performance the use of a micro-organism ”.
- (4) In paragraph 5(3)(b), insert at the beginning the words “ in the case of an undertaking given in accordance with paragraph 1(a), ” and insert at the end the word “ or ” followed by:
(c) in the case of an undertaking given in accordance with paragraph (1)(b), when the patent is granted.
- (5) Any reference to “biological material”—
- (a) in paragraphs 3(1)(a), 4, 5, 6(3), 7(2) and 8 is a reference to “culture of the micro-organism”; and
- (b) other than in those provisions, is a reference to “micro-organism”.
- (6) Paragraph 2(2)(b) (requirement that application contains relevant information) does not have effect.
- (7) In paragraph 6(5)(b), for the words from “the period of 20 years” to the end of that provision substitute “ the period ending with the date on which the application was terminated or withdrawn ”.
- (8) The specification of an application for a patent, or of a patent, must mention any international agreement under which the micro-organism is deposited.
Continued application of Patents Rules 1968 to existing patents
9
- (1) This paragraph and paragraph 10 apply to existing patents and applications.
- (2) Rules 4, 58 and 59 of the Patents Rules 1968 continue to apply.
Application of these Rules to existing patents and applications
10
- (1) Rules 4, 10(2), 44 to 50, 73 to 88, 101, 103 to 105 and 107 apply to existing patents and applications.
- (2) In those provisions as they apply by virtue of this paragraph, a reference to a specified provision of these Rules other than one of those provisions is a reference to the corresponding provision of the Patents Rules 1968 (any provision of those Rules being treated as corresponding to a provision of these Rules if it was made for purposes which are the same as or similar to that provision of these Rules).
Application of the 1995 Rules to sections 8 and 12
11
If before 1st January 2005 a question has been referred to the comptroller under section 8 or 12, in relation to that reference, sections 8, 11 and 12 have effect as if the amendments to those sections by the Patents Act 2004 had not been made and rules 9 and 13 of the 1995 Rules have effect as in force immediately before 1st January 2005.
SCHEDULE 6 — REVOCATIONS
| Title and number | Extent of revocation |
|---|---|
| The Patents Rules 1978 (SI 1978/216) | Rule 124. |
| The Patents Rules 1995 (SI 1995/2093) | The whole rules. |
| The Patents (Supplementary Protection Certificates) Rules 1997 (SI 1997/64) | The whole rules. |
| The Patents (Fees) Rules 1998 (SI 1998/1778) | The whole rules. |
| The Patents and Trade Marks (World Trade Organisation) Regulations 1999 (SI 1999/1899) | Regulations 9 to 12. |
| The Patents (Amendment) Rules 1999 (SI 1999/1092) | The whole rules. |
| The Patents (Fees) (Amendment) Rules 1999 (1999/1093) | The whole rules. |
| The Patents (Amendment) (No. 2) Rules 1999 (SI 1999/3197) | The whole rules. |
| The Patents (Amendment) Rules 2001 (SI 2001/1412) | The whole rules. |
| The Patents (Amendment) Rules 2002 (SI 2002/529) | The whole rules. |
| The Patents (Electronic Communications) (Amendment) Rules 2003 (SI 2003/513) | The whole rules. |
| The Patents Act 2004 (Commencement No. 1 and Consequential and Transitional Provisions) Order 2004 (SI 2004/2177 (C.94)) | Articles 3 to 5. |
| The Patents (Amendment) Rules 2004 (SI 2004/2358) | The whole rules. |
| The Patents Act 2004 (Commencement No. 2 and Consequential, etc. and Transitional Provisions) Order 2004 (SI 2004/3205 (C.140)) | Articles 3 to 8. Article 9(2). |
| The Patents Act 2004 (Commencement No. 2 and Consequential, etc. and Transitional Provisions) Order 2004 (SI 2004/3205 (C.140)) | |
| The Patents (Translations) Rules 2005 (SI 2005/687) | The whole rules. |
| The Patents (Amendment) Rules 2005 (SI 2005/2496) | The whole rules. |
| The Patents, Trade Marks and Designs (Address For Service and Time Limits, etc) Rules 2006 (SI 2006/760) | Rules 4 to 9. |
| The Patents (Amendment) Rules 2007 (SI 2007/677) | The whole rules. |
Signed
Triesman — Parliamentary Under Secretary of State for Intellectual Property and Quality — 19th November 2007
Explanatory note
(This note is not part of the Rules)
Footnotes
1977 c. 37; section 74B was inserted by the Patents Act 2004 (c.16); section 123 was amended by the Copyright, Designs and Patents Act 1988 (c. 48), Schedule 5, paragraph 29, and the Patents Act 2004 (c.16), Schedule 2, paragraph 26; section 125A was inserted by the Copyright, Designs and Patents Act 1988, Schedule 5, paragraph 30, and was amended by SI 2000/2037.
1992 c. 53; the definition of “Council” has been amended by the Tribunals, Courts and Enforcement Act 2007 (c.15), Schedule 8, paragraph 30.
Cm 5247.
OJ No L 157, 9.6.2006, p1.
1982 c. 27; section 1(3) was substituted by SI 1990/2591, and then amended by section 2(5) and (6) of the Civil Jurisdiction and Judgments Act 1991 (c. 12) and by SI 2000/1824 and 2001/3929.
1977 c.37; section 74A was inserted by the Patents Act 2004 (c.16), section 13.
SI 1995/2093; as amended by SI 1999/1092, 1999/1899, 1999/3197, 2001/1412, 2002/529, 2003/513, 2004/2177 (C. 94), 2004/2358, 2004/3205 (C. 140), 2005/2496, 2006/760 and 2007/677.
The date that section 125A of the Patents Act 1977 came into effect (see paragraph 30 of Schedule 5 to the Copyright, Designs and Patents Act 1988 (c. 48)) and SI 1990/2168.
The date that SI 2000/2037 came into force. Regulation 9 of that SI limits the amendments to applications made after the provision came into force.
International exhibitions
International exhibitions
Declarations of priority
Declaration of priority for the purposes of section 5(2) (priority date)
Request to the comptroller for permission to make a late declaration under section 5(2B)
Filing of priority documents to support a declaration under section 5(2)
Translation of priority documents
Mention of the inventor
Mention of the inventor
Waiving the right to be mentioned
Form and content of applications
Applications for the grant of patents under sections 14 and 15
Biological material and sequence listings
Size and presentation of application
The abstract
Single inventive concept
References under section 15(1)(c)(ii)
Missing parts
New applications
New applications filed as mentioned in section 15(9)
New applications under sections 8(3), 12(6) and 37(4)
Extensions for new applications
Periods for filing contents of application
Periods prescribed for the purposes of sections 15(10) and 17(1)
Preliminary examination
Preliminary examination under section 15A
Correcting a declaration made for the purposes of section 5(2)
Formal requirements
Publication of application
Publication of application
Search and substantive examination
Search under section 17
Request for substantive examination under section 18
Substantive examination reports
Period for putting application in order
Amendment of application before grant
Reinstatement of applications under section 20A
Observations by third parties on patentability
Certificate and amendment
Certificate of grant
Amendment of specification after grant
Renewal
Renewal of patents: general
Renewal of patents: first renewal
Renewal of patents: subsequent renewals
Renewal notice
Restoration of lapsed patents under section 28
Notification of lapsed patent
Surrender and cancelling entry that licences available as of right
Surrender
Application for, and cancellation of, an entry that licences are available as of right
The register
Entries in the register
Advertisement in relation to register
Copies of entries in, or extracts from, the register and certified facts
Registrations of transactions, instruments and events
Copies of documents and corrections in relation to the register
Copies of documents
Correction of name, address and address for service
Request for correction of error
Requests for information or documents
Restrictions on inspection of documents
Request for information where section 118(4) applies
Confidential documents
Requests for certain information
Bibliographic information about an unpublished application
Translations
Translations of European patents (UK)
Corrected translations
Conversion requests
Procedure for making a conversion request under section 81(2)(b)(i)
Procedure for making a conversion request under section 81(2)(b)(ii)
Request for substantive examination following a direction under section 81
Obligations to other contracting parties to the European Patent Convention
Recognition of patent decision of competent authorities of other states
Procedure for obtaining evidence for proceedings under the European Patent Convention
Communication of information to the European Patent Office
Interpretation
Interpretation relating to international applications
Filing at the Patent Office
Filing of international applications at the Patent Office
Beginning the national phase, international exhibitions and altered prescribed periods
Beginning of national phase
International exhibitions
Altered prescribed periods
Translations
Necessary translations under section 89A(3) and (5)
Requirements of necessary translations
Application deemed withdrawn or filing date refused under the Patent Co-operation Treaty
Directions under section 89(3) and (5)
Circumstance prescribed for the purposes of section 89(3)
Introductory
Scope and interpretation
Overriding objective
Publication of notices
Conduct of hearings
Starting proceedings
Notification of the parties
The counter-statement
Copies of documents
Evidence rounds and the hearing
Alteration of time limits
General powers of the comptroller in relation to proceedings before him
Striking out a statement of case and summary judgment
Hearings in public
Miscellaneous
Security for costs or expenses
Powers of comptroller to compel attendance of witnesses and production of documents
Evidence in proceedings before the comptroller
Proceedings in Scotland
Proceedings started under section 46(3) by a person other than the proprietor
Licences following entitlement proceedings
Period prescribed for applications by employee for compensation
Interpretation
Interpretation
Request for opinion
Request for an opinion under section 74A
Refusal or withdrawal of request
Notification and advertisement of request
Submission of observations and observations in reply
Issue of the opinion
Review of opinion
Review of opinion
Procedure on review
Outcome of review
Agents and advisers
Agents
Appointing advisers
Address for service
Address for service
Failure to furnish an address for service
Corrections and remission of fees
Correction of errors
Remission of fees
Correction of irregularities
Time limits and delays
Extension of time limits
Extension of time limits specified by comptroller
Interrupted days
Delays in communication services
Copies available to the comptroller
Copies available to the comptroller
Translations
Translations
Translations in proceedings in relation to a European patent (UK)
Establishing the accuracy of translations
Supplementary Protection Certificates
Supplementary protection certificates
Publications
The journal
Reports of cases
Publication and sale of documents
Transitional provisions and revocations
Transitional provisions and revocations
- Patents Act 1977
- section 8(1) (reference regarding entitlement in relation to a patent under the Act)
- section 10 (request for directions for handling a joint application)
- section 11(5) (reference regarding entitlement to a licence to continue working after transfer of application)
- section 12(1) (reference regarding entitlement in relation to a foreign or convention patent)
- section 12(4) (reference involving joint applications on entitlement in relation to a foreign or convention patent)
- section 13(3) (application to comptroller to remove person mentioned as inventor)
- section 37(1) (determination of right to patent after grant)
- section 38(5) (reference regarding entitlement to a licence to continue working after transfer of patent)
- section 40 (application for compensation by an employee)
- section 41(8) (application to vary order for compensation for certain inventions)
- section 46(3) (application to settle terms of licence available as of right)
- section 47(3) (application to cancel licence available as of right)
- section 48(1) (application for a compulsory licence)
- section 50A(2) (application following merger and market investigation)
- section 51(1) (application by Minister following report of Competition Commission)
- section 52(2)(a) (application to cancel compulsory licence)
- section 61(3) (reference on question of infringement before the comptroller)
- section 71 (declaration of non-infringement)
- section 72 (application to revoke patent)
- Patents Rules 2007
- rule 10(2) (application to be mentioned as inventor)
- rule 88(1) (application to hold proceedings in Scotland)
- paragraph 7(4) of Schedule 1 (notice of objection to expert)
- Compulsory Licensing Regulation
- Article 5(c) of the Compulsory Licensing Regulation (application to terminate compulsory pharmaceutical licence)
- Article 6(1) of that Regulation (application for a compulsory pharmaceutical)
- Article 10(8) of that Regulation (application to access books and records)
- Article 16(1), second paragraph, of that Regulation (application for a review of a compulsory pharmaceutical)
- Article 16(4) of that Regulation (application for modification of a compulsory pharmaceutical)
- Medicinal Products Regulation and Plant Protection Products Regulation
- Article 14(d) of the Medicinal Products Regulation and the Plant Protection Products Regulation (request to review lapse of supplementary protection certificate)
- Article 15 of those Regulations (application for declaration of invalidity of supplementary protection certificate)
- Article 15a of the Medicinal Products Regulation (application for revocation of an extension of the duration of a supplementary protection certificate)
- Patents Act 1977
- section 27(5) (opposition to amendment of specification after grant)
- section 29(2) (opposition to surrender of patent)
- section 47(6) (opposition to cancellation of licence available as of right), where the application was made by the proprietor of the patent
- section 75(2) (opposition to amendment during infringement or revocation proceedings)
- section 117(2) (opposition to correction of error in patents and applications)
- Patents Act 1977
- section 47(6) (opposition to cancellation of licence available as of right), where the application was made by a person other than the proprietor of the patent
- section 52(1) (opposition to an application for compulsory licence or under section 50A or 51)
- section 52(2)(b) (opposition to an application to cancel a compulsory licence)
- Patents Rules 2007
- rule 74 (overriding objective)
- rule 79 (copies of documents)
- rule 80(2) to (6) (evidence and the hearing)
- rule 81 (alteration of time limits)
- rule 82 (general powers of the comptroller in relation to proceedings before him)
- rule 84 (hearings in public)
- rule 87 (evidence in proceedings before the comptroller)
- Patents Rules 2007
- rule 83 (striking out a statement of case and summary judgment)
- rule 85 (security for costs or expenses)
- rule 86 (powers of comptroller to compel attendance of witness and production of documents)
- rule 88 (proceedings in Scotland)
- rule 6(2)(b) (declaration of priority for the purposes of section 5(2) made after the date of filing)
- rule 7(1) (period for making a request to the comptroller for permission to make a late declaration of priority)
- rule 32(1) (application to reinstate a terminated application)
- rule 37 and 38 (renewal of patents)
- rule 40(1) (application to restore a lapsed patent)
- rule 41A (payment of fees under section 77(5A) following restoration of a European patent (UK))
- rule 43(4) (application to cancel entry that licence available as of right)
- rule 58(3) (request for a direction under section 81)
- rule 59(1) (request from a foreign industrial property office for a direction under section 81)
- rule 66(3) (period for making a request to the comptroller for permission to make a late declaration of priority in respect of an international application for a patent (UK))
- rule 76(2) (notice of opposition), except in relation to an opposition under section 27(5) where there are pending before the court or the comptroller proceedings in which the validity of the patent is put in issue
- rule 77(8) and (10) (opposition periods)
- ...
- rule 109 (extension of time limits specified by comptroller)
- rule 116(2) (fee for supplementary protection certificate)
- paragraph 8(5) of Schedule 1 (new deposits of biological material)
- rule 8(1) and (2) (filing of information and priority documents)
- rule 10(3) (filing of statement of inventorship and the right to be granted a patent)
- rule 18(1) (missing parts)
- rule 21 (extensions for new applications)
- rule 22(1), (2) and (5) (periods prescribed for the purposes of sections 15(10) and 17(1))
- rule 28(2), (3) and (5) (request for substantive examination)
- rule 30 (period for putting an application in order)
- rule 30A (fee for the grant of a patent under section 18(4))
- rule 56(6) and (7) (filing of a translation of European patent (UK) specifications)
- rule 58(4) (request under section 81(2)(b)(i))
- rule 59(3) (request under section 81(2)(b)(ii))
- rule 60 (request for substantive examination following a direction under section 81)
- rule 66(1) and (2) (international applications for patents: entry into national phase)
- rule 68 (international applications for patents: altered prescribed periods)
- rule 104(2) (period for furnishing an address for service), in relation to an application for a patent
- paragraph 3(2) of Schedule 1 (filing of information in relation to the deposit of biological matter)
- rule 10(3) (filing of statement of inventorship and the right to be granted a patent)
- rule 12(3) and (9) (filing of name and address and translations)
- rule 19 (new applications filed as mentioned in section 15(9))
- rule 21(1)(a) and (2)(a) (extensions for new applications)
- rule 22 (periods prescribed for the purposes of sections 15(10) and 17(1))
- rule 28 (request for substantive examination)
- rule 30 (period for putting application in order)
- rule 30A (fee for the grant of a patent under section 18(4))
- rule 58(4) (request under section 81(2)(b)(i))
- rule 59(3) (request under section 81(2)(b)(ii))
- rule 60 (request for substantive examination following a direction under section 81)
- rule 66(1) and (2) (international applications for patents: entry into national phase)
- rule 104(2) (period for furnishing an address for service), in relation to an application for a patent
- rule 68 (international applications for patents: altered prescribed periods)
Editorial notes
1977 c. 37; section 74B was inserted by the Patents Act 2004 (c.16); section 123 was amended by the Copyright, Designs and Patents Act 1988 (c. 48), Schedule 5, paragraph 29, and the Patents Act 2004 (c.16), Schedule 2, paragraph 26; section 125A was inserted by the Copyright, Designs and Patents Act 1988, Schedule 5, paragraph 30, and was amended by SI 2000/2037.
1992 c. 53; the definition of “Council” has been amended by the Tribunals, Courts and Enforcement Act 2007 (c.15), Schedule 8, paragraph 30.
Cm 5247.
OJ No L 157, 9.6.2006, p1.
1977 c.37; section 74A was inserted by the Patents Act 2004 (c.16), section 13.
SI 1995/2093; as amended by SI 1999/1092, 1999/1899, 1999/3197, 2001/1412, 2002/529, 2003/513, 2004/2177 (C. 94), 2004/2358, 2004/3205 (C. 140), 2005/2496, 2006/760 and 2007/677.
SI 2004/2357.
The date that section 125A of the Patents Act 1977 came into effect (see paragraph 30 of Schedule 5 to the Copyright, Designs and Patents Act 1988 (c. 48)) and SI 1990/2168.
The date that SI 2000/2037 came into force. Regulation 9 of that SI limits the amendments to applications made after the provision came into force.
SI 1968/1389.
2004 (c.16).
Rule 103(4) substituted for rule 103(4)(5) (6.4.2009) by The Patents, Trade Marks and Designs (Address for Service) Rules 2009 (S.I. 2009/546), rules 1, 9
Words in rule 104(5) omitted (6.4.2009) by virtue of The Patents, Trade Marks and Designs (Address for Service) Rules 2009 (S.I. 2009/546), rules 1, 10
Rule 81A inserted (6.4.2010) by The Patents and Patents and Trade Marks (Fees) (Amendment) Rules 2010 (S.I. 2010/33), rules 1, 5 (with rule 15)
Rule 80(1A) inserted (6.4.2010) by The Patents and Patents and Trade Marks (Fees) (Amendment) Rules 2010 (S.I. 2010/33), rules 1, 4 (with rule 15)
Word in rule 80(1)(a) omitted (6.4.2010) by virtue of The Patents and Patents and Trade Marks (Fees) (Amendment) Rules 2010 (S.I. 2010/33), rules 1, 3 (with rule 15)
Rule 80(1)(aa) inserted (6.4.2010) by The Patents and Patents and Trade Marks (Fees) (Amendment) Rules 2010 (S.I. 2010/33), rules 1, 3 (with rule 15)
Words in rule 10(3) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 12(3) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 12(9) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 18(2) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 18(7)(a) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 18(7)(b) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 20(3)(a) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 20(3)(b) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 21(1)(a)(i) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 21(1)(b)(i) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 22(3) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 22(5)(a)(i) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 22(5)(b)(i) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 22(5)(b)(ii) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 22(7)(a) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 22(7)(b)(i) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 22(7)(b)(ii) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 24(2) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 26(1) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 28(2) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 28(5)(a) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 28(7) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 30(2)(a) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 30(2)(b) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 30(3)(a)(ii) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 30(4) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 31(4)(a) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 32(8) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 37(3)(a) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 37(4)(a)(i) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 40(7) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 43(4) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 51(2)(b) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 52(4) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 53(3)(a) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 57(6) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 58(3) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 58(4) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 59(1) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 59(3) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 66(1) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 66(2) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 66(3) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 67(2) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 68(2)(b) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 68(3)(b) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 68(4)(a) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 68(4)(b) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 71(4) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
Words in rule 76(2)(a) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)
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