2007 Rule 93

93. Request for an opinion under section 74A

Rule 92 | Index | Rule 94

(1) A request must be made on Patents Form 17 and must be accompanied by a copy and a statement setting out fully-

  • (a) the question upon which an opinion is sought;
  • (b) the requester's submissions on that question; and
  • (c) any matters of fact which are requested to be taken into account.

(2) The statement must be accompanied by-

  • (a) the name and address of any persons, of whom the requester is aware, having an interest in that question; and
  • (b) particulars of any relevant proceedings of which the requester is aware which relate to the patent in suit and which may be relevant to that question.

(3) However, where the requester is acting as an agent in making the request, the persons referred to in paragraph (2)(a) do not include the person for whom the requester is so acting.

(4) The statement shall be accompanied by a copy of any evidence or other document (except a document which has been published by the comptroller or is kept at the Patent Office) which is referred to in the statement.

(5) Each such statement, evidence or other document must be provided in duplicate.

(6)1 The prescribed matters for the purposes of Section 74(1) are as follows-

  • (a) whether a particular act constitutes, or (if done) would constitute, an infringement of the patent;
  • (b) whether, or to what extent, an invention for which the patent has been granted is not a patentable invention;
  • (c) whether the specification of the patent discloses the invention clearly enough and completely enough for it to be performed by a person skilled in the art;
  • (d) whether the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent as filed or, if the patent was granted on a new application, in the earlier application as filed;
  • (e) whether the protection conferred by the patent has been extended by an amendment which should not have been allowed;
  • (f) whether a supplementary protection certificate is invalid under Article 15 of the Medicinal Products Regulation2 ; and
  • (g) whether a supplementary protection certificate is invalid under Article 15 of the Plant Protection Products Regulation.
Unless otherwise stated, the content of this page is licensed under Creative Commons Attribution-ShareAlike 3.0 License