The Patents Rules 2007
Made: 19th November 2007
Laid before Parliament: 22nd November 2007
Coming into force: 17th December 2007
Including amendments made by:
- The Patents, Trade Marks and Designs (Address for Service) Rules 2009, SI 2009 No. 546: Rules 103 & 104 (as from 6 April 2009).
- The Patents and Patents and Trade Marks (Fees) (Amendment) Rules 2010, SI 2010 No. 33 (as from 6 April 2010).
- The Patents (Amendment) Rules 2011, SI 2011 No. 2052 (as from 1 October 2011).
- The Patents (Amendment) Rules 2014, SI 2014 No. 578 (as from 6 April 2014) - Rule 19.
- The Patents (Amendment) (No. 2) Rules 2014, SI 2014 No. 2401 - Rules 19, 36, 39, 41A (new), 44, 93, Schedule 4
- The Patents (Amendment) (No. 2) Rules 2016, SI 2016 No. 892 - amendments to be implemented.
ARRANGEMENT OF RULES
Part 1: Introductory
1 Citation and commencement
2 General Interpretation
3 The declared priority date
4 Forms and documents
Part 2: Applications for Patents
International exhibitions
5 International exhibitions
Declarations of priority
6 Declaration of priority for the purposes of section 5(2)
7 Request to the comptroller for permission to make a late declaration under section 5(2B)
8 Filing of priority documents to support a declaration under section 5(2)
9 Translation of priority documents
Mention of the inventor
10 Mention of the inventor
11 Waiving the right to be mentioned
Form and content of applications
12 Applications for the grant of patents under sections 14 and 15
13 Biological material and sequence listings
14 Size and presentation of application
15 The abstract
16 Single inventive concept
17 References under section 15(1)(c)(ii)
18 Missing parts
New applications
19 New applications filed as mentioned in section 15(9)
20 New applications under section 8(3), 12(6) and 37(4)
21 Extensions for new applications
Period for filing contents of application
22 Periods prescribed for the purposes of section 15(10) and 17(1)
Preliminary examination
23 Preliminary examination under section 15A
24 Correcting a declaration made for the purposes of section 5(2)
25 Formal requirements
26 Publication of application
Search and substantive examination
27 Search under section 17
28 Request for substantive examination under section 18
29 Substantive examination reports
30 Period for putting application in order
31 Amendment of application before grant
32 Reinstatement of applications under section 20A
33 Observations by third parties on patentability
Part 3: Granted Patents
34 Certificate of grant
35 Amendment of specification after grant
Renewal
36 Renewal of patents: general
37 Renewal of patents: first renewal
38 Renewal of patents: subsequent renewals
39 Renewal notice
40 Restoration of lapsed patents under section 28
41 Notification of lapsed patent
41A Payment of fees under section 77(5A) following restoration of a European patent (UK)
Surrender and cancelling entry that licences available as of right
42 Surrender
43 Application for, and cancellation of, an entry that licences are available as of right
Part 4: The Register and Other Information
The register
44 Entries in the register
45 Advertisement in relation to register
46 Copies of entries in, or extracts from, the register and certified facts
47 Registrations of transactions, instruments and events
Copies of documents and corrections in relation to the register
48 Copies of documents
49 Correction of name, address and address for service
50 Request for correction of error
Requests for information or documents
51 Restrictions on inspection of documents
52 Request for information where section 118(4) applies
53 Confidential documents
54 Requests for certain information
55 Bibliographic information about an unpublished application
Part 5: European Patents (UK)
Translations
56 Translations of European patents (UK)
57 Corrected translations
Conversion requests
58 Procedure for making a conversion request under section 81(2)(b)(i)
59 Procedure for making a conversion request under section 81(2)(b)(ii)
60 Request for substantive examination following a direction under section 81
Obligations to other contracting parties to the European Patent Convention
61 Recognition of patent decision of competent authorities of other states
62 Procedure for obtaining evidence for proceedings under the European Patent Convention
63 Communication of information to the European Patent Office
Part 6: International Applications
Interpretation
64 Interpretation relating to international applications
Filing at the Patent Office
65 Filing of international applications at the Patent Office
Beginning the national phase, international exhibitions and altered prescribed periods
66 Beginning of national phase
66A Amendment of international application before grant
67 International exhibitions
68 Altered prescribed periods
Translations
69 Necessary translations under section 89A(3) and (5)
70 Requirements of necessary translations
Application deemed withdrawn or filing date refused under the Patent Co-operation Treaty
71 Directions under section 89(3) and (5)
72 Circumstance prescribed for the purposes of section 89(3)
Part 7: Proceedings Heard Before the Comptroller
Introductory
73 Scope and interpretation
74 Overriding objective
75 Publication of notices
Conduct of hearings
76 Starting proceedings
77 Notification of the parties
78 The counter-statement
79 Copies of documents
80 Evidence rounds and the hearing
81 Alteration of time limits
81A Failure to file Patents Form 4
82 General powers of the comptroller in relation to proceedings before him
83 Striking out a statement of case and summary judgment
84 Hearings in public
Miscellaneous
85 Security for costs or expenses
86 Powers of comptroller to compel attendance of witnesses and production of documents
87 Evidence in proceedings before the comptroller
88 Proceedings in Scotland
89 Proceedings started under section 46(3) by a person other than the proprietor
90 Licences following entitlement proceedings
91 Period prescribed for applications by employee for compensation
Part 8: Opinions
Interpretation
92 Interpretation
Request for opinion
93 Request for an opinion under section 74A
94 Refusal or withdrawal of request
95 Notification and advertisement of request
96 Submission of observations and observations in reply
97 Issue of the opinion
Review of opinion
98 Review of opinion
99 Procedure on review
100 Outcome of review
Part 9: Miscellaneous
Agents and advisers
101 Agents
102 Appointing advisers
Address for service
103 Address for service
104 Failure to furnish an address for service
Corrections and remissions of fees
105 Correction of errors
106 Remission of fees
107 Correction of irregularities
Time limits and delays
108 Extension of time limits
109 Extension of time limits specified by comptroller
110 Interrupted Days
111 Delays in communication services
Copies available to the comptroller
112 Copies available to the comptroller
Translations
113 Translations
114 Translations in proceedings in relation to a European patent (UK)
115 Establishing the accuracy of translations
Supplementary Protection Certificates
116 Supplementary Protection Certificates
Publications
117 The journal
118 Reports of cases
119 Publication and sale of documents
Transitional provisions and repeals
120 Transitional provisions and revocations
Schedules
Schedule 1: Biological material
Schedule 2: Formal and other requirements
Schedule 3: Proceedings heard before the Comptroller
Schedule 4: Extension of time limits
Schedule 5: Transitional provisions
Schedule 6: Revocations
