Patents

PATENTS RULES 1995

as amended at 1 April 2007

The Patents Rules 1995 (and amending legislation) is reproduced under the terms of Crown Copyright Policy Guidance issued by HMSO.

The Secretary of State, in exercise of the powers conferred upon him by sections 5(2), 8(3), 12(6),13(1)and (3),14 (1) and (6), 15(2),(3) and(5), 16(1), 17(1),(2) and(8), 18(1) and (4), 19(1), 20(1), 21(1), 24(2), 25(3) and (5), 28(1), (1A) and (2A), 32(2), (5), (6) and (7), 40(1) and (2), 47(3) and (6), 52(1), 77 (6), 78(4), 80(3), 81(2)(b) and (2)(c), 89, 89A, 92(3) and (4), 97 (1)(d), 118(1) and (3)(b), 120(1), 123(1) to (3A), (6) and (7), 124, 125A(1), (2) and (3), 127(6) and 130(2) of, and paragraph 4A(5) of Schedule 1 and paragraph 14 of Schedule 4 to, the Patents Act 1977 after consultation with the Council on Tribunals pursuant to section 8(1) of the Tribunals and Inquiries Act 1992, hereby makes the following Rules:-

PRELIMINARY

Citation and commencement

1. These Rules may be cited as the Patents Rules 1995 and shall come into force on 4th September 1995.

Interpretation

2. In these Rules-

"the Act" means the Patents Act 1977;

"the 1949 Act" means the Patents Act 1949;

"declared priority date" means-

(a) the date of filing of the earliest relevant application specified in a declaration made for the purposes of section 5 where the priority date claimed in the declaration has not been lost or abandoned and where the declaration has not been withdrawn before preparations for the publication of the application in suit have been completed by the Patent Office in accordance with section 16;
(b) the date of filing of any such application for a patent as is referred to in section 127(4) which is specified in a declaration made for the purposes of that section;
(c) where an application for a European patent (UK) is, by virtue of section 81 (1), to be treated as an application for a patent under the Act, the date of filing of the earliest previous application mentioned in the declaration of priority filed by the applicant in respect of the application for a European patent (UK) under Article 88(1) of the European Patent Convention where the priority date claimed in the declaration has not been lost or abandoned and where the declaration has not been withdrawn before the comptroller directs that the application for a European patent (UK) shall be so treated; or
(d) where an international application for a patent (UK) is to be treated as an application for a patent under the Act, the date of filing of the earliest application filed in or for a State which is a party to the Convention for the Protection of Industrial Property signed at Paris on 20th March 1883 the priority of which is claimed in a declaration filed for the purposes of Article 8 of the Patent Co-operation Treaty, provided that such priority claim has not been lost or abandoned under the provisions of that Treaty;

“EEA state” means a member State, Iceland, Liechtenstein or Norway;

"Journal" means the journal published in accordance with rule 115;

"the initiation date" shall be the date the new application was initiated by documents, containing the information mentioned in any of paragraphs (a) to (c) of section 15(1), being filed at the Patent Office;

"termination" has the meaning given by section 20B(7) and "terminated" shall be construed accordingly.

Construction

3. In these Rules, save where otherwise indicated-

(a) references to a section are references to that section of the Act;
(b) references to a rule are references to that rule in these Rules;
(c) references to a Schedule are references to that Schedule to these Rules;
(d) NO LONGER HAS EFFECT, Patents Act 2004 (Commencement No. 1 and Consequential and Transitional Provisions) Order 2004;

and references to the filing of a form or other document are references to filing it at the Patent Office.

Forms

4.- (1) The forms of which the use is required by these Rules are those set out in directions under section 123(2A) (but this is without prejudice to rule 121(1)).

(2) Such a requirement to use a form is satisfied by the use of -

(a) a form which is a replica of the form set out in such directions; or
(b) a form which is acceptable to the comptroller and contains the information required by the form as so set out.

(2A) Such directions shall be published in accordance with rule 115(2)

(3) A requirement under these Rules to use a form shall not apply if the comptroller, in directions made under section 124A, directs that the information required may be presented in some other manner.

Multiple copies

4A. Where a document is delivered to the comptroller in electronic form or using electronic communications, a requirement in these Rules for the document to be delivered to the comptroller with a copy or copies of that document or in duplicate or triplicate shall not apply if the requirement is removed or varied by the comptroller in directions made under section 124A.

International exhibitions

5.-(1) An applicant for a patent who wishes the disclosure of matter constituting an invention to be disregarded in accordance with section 2( 4)(c) shall, at the time of filing the application for the patent, inform the comptroller in writing that the invention has been displayed at an international exhibition.

(2) The applicant shall, within four months of filing the application, file a certificate, issued at the exhibition by the authority responsible for the exhibition, stating that the invention was in fact exhibited there. The certificate shall also state the opening date of the exhibition and, where the first disclosure of the invention did not take place on the opening date, the date of the first disclosure. The certificate shall be accompanied by an identification of the invention, duly authenticated by the authority.

(3) For the purposes of section 130 (2) a statement may be published in the Journal that an exhibition described in the statement falls within the definition of international exhibition in subsection (1) of that section.

(4) In the case of an international application for a patent (UK), the application of this rule shall be subject to the provisions of rule 85(3).

Declaration of priority for the purposes of section 5(2)

6.-(1) Subject to paragraph (2) and rule 6A(4), a declaration for the purposes of section 5(2) shall be made at the time of filing the application for a patent.

(2) Subject to rule 6A(4), a declaration for the purposes of section 5 (2) may be made after the date of filing provided that -

(a) it is made on Patents Form 3/77;
(b) it is made before the end of the period of sixteen months starting immediately following the date of filing of the earlier relevant application (or if there is more than one, the earliest of them) specified in that declaration; and
(c) the condition in paragraph (3) is met.

(3) The condition is that -

(a) the applicant has not made a request under section 16(1) to publish the application during the period prescribed for the purposes of that section; or
(b) any request made was withdrawn before the preparations for the publication of the application by the Patent Office had been completed.

(4) A declaration for the purposes of section 5(2) shall specify -

(a) the date of filing of each earlier relevant application; and
(b) the country in or for which it was made.

(5) In the case of a new application to which section 15(9) applies, no declaration shall be made which has not also been made in or in connection with the earlier application.

(6) For the purposes of rules 6B and 6C, "priority application" means an earlier relevant application specified in the declaration.

Request to the comptroller for permission to make a late declaration under section 5(2B)

6A.-(1) The period prescribed for the purposes of section 5(2A)(b) shall be the period of two months.

(2) A request under section 5(2B) shall be -

(a) made on Form 3/77; and

(b) supported by evidence of why the application in suit was not filed before the end of the period allowed under section 5(2A)(a).

(2A) Such a request may only be made where –

(a) the condition in paragraph (3) is met; or

(b) the request is made in relation to an international application for a patent (UK).

(3) The condition is that -

(a) the applicant has not made a request under section 16(1) to publish the application during the period prescribed for the purposes of that section; or
(b) any request made was withdrawn before the preparations for the publication of the application by the Patent Office had been completed.

(4) Where an applicant makes a request under section 5(2B), he shall make the declaration for the purposes of section 5(2) at the same time as making that request.

Filing of priority documents to support a declaration under section 5(2)

6B.-(1) In respect of each priority application to which this paragraph applies the applicant shall, before the end of the period of sixteen months starting on the declared priority date, furnish to the Patent Office the file number of that application; otherwise the declaration made for the purposes of section 5(2), in so far as it relates to the priority application, shall be disregarded.

(2) In respect of each priority application to which this paragraph applies the applicant shall, before the end of the period of sixteen months starting on the declared priority date, furnish to the Patent Office a copy of that application duly certified by the authority with which it was filed or otherwise verified to the satisfaction of the comptroller; otherwise the declaration made for the purposes of section 5(2), in so far as it relates to the priority application, shall be disregarded.

(3) Paragraph (1) applies to every priority application except where -

(a) the application in suit is treated as an application for a patent under the Act, by reason of a direction given under section 81, and the file number of the priority application was indicated in compliance with rule 38(2) of the Implementing Regulations to the European Patent Convention; or
(b) the application in suit is an international application for a patent (UK) and the file number of the priority application was indicated in compliance with rule 4.10(a) and (b) of the Regulations made under the Patent Co-operation Treaty.

(4) Paragraph (2) applies to every priority application except where -

(a) the application in suit is treated as an application for a patent under the Act, by reason of a direction given under section 81, and a certified copy of the priority application was filed in compliance with rule 38(3) of the Implementing Regulations to the European Patent Convention;
(b) the application in suit is an international application for a patent (UK) and a certified copy of the priority application was filed in compliance with rule 17.1 of the Regulations made under the Patent Co-operation Treaty; or
(c) the priority application or a copy of the priority application is kept at the Patent Office.

Translation of priority documents

6C.-(1) The comptroller may direct the applicant to comply with the requirements of paragraph (4), if -

(a) a copy of the priority application -

(i) was furnished in accordance with rule 6B(2);
(ii) was filed in compliance with rule 38(3) of the Implementing Regulations to the European Patent Convention;
(iii) was filed in compliance with rule 17.1 of the Regulations made under the Patent Co-operation Treaty; or
(iv) has been made by the comptroller in accordance with rule 112A(2);

(b) that copy is in a language other than English; and

(c) the matters disclosed in the priority application are relevant to the determination of whether or not an invention, to which the application in suit relates, involves an inventive step.

(2) In his direction under paragraph (1), the comptroller shall specify a period within which the applicant must comply with the requirements of paragraph (4).

(3) The comptroller shall not specify a period under paragraph (2) that ends after the grant of the patent.

(4) Where the comptroller has given a direction under paragraph (1), the applicant shall, before the end of the period specified by the comptroller, file -

(a) an English translation of the priority application; or
(b) a declaration that the application in suit is a complete translation into English of the priority application,

otherwise the declaration made for the purposes of section 5(2), in so far as it relates to the priority application, shall be disregarded.

RIGHT TO APPLY FOR AND OBTAIN A PATENT

References under section 8(1)(a) or 12(1)(a)

7.-(1) A reference under section 8(1)(a) or 12(1)(a) 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 nature of the question, the facts upon which the person making the reference relies and the order or other relief which he is seeking.

(2) The comptroller shall send a copy of the reference and statement to-

(a) any person (other than the person referred to in paragraph (1) above) alleged in the reference to be entitled to be granted a patent for the invention;
(b) any person, not being a party to the reference, who is shown in the register as having a right in or under the patent application;
(c) where the application for the patent has not been published, any person (not being a party to the reference) who is an applicant for the patent or has given notice to the comptroller of a relevant transaction, instrument or event; and
(d) every person who has been identified in the patent application or a statement filed under section 13(2)(a) as being, or being believed to be, the inventor or joint inventor of the invention.

other than any person who has consented in writing to the reference.

(3) If any person who is sent a copy of the reference and statement under paragraph (2) above wishes to oppose the making of the order or the granting of the relief sought, he ("the opponent") shall, within the period of six weeks beginning on the date the copies are sent to him, file in duplicate a counter-statement setting out fully the grounds of his opposition and the comptroller shall send a copy of the counter-statement to the person making the reference and to those recipients of the copy of the reference and statement who are not party to the counterstatement.

(4) The person making the reference or any such recipient may, within the period of six weeks 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,-

(a) in any case, to the opponent; and
(b) in the case of evidence filed by such a recipient, to the person making the reference.

(5) Within the period of six weeks beginning on the date when the copy of such evidence is sent to him or, if no such evidence is filed, within six weeks 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 the evidence so filed to the person making the reference and those recipients; and within the period of six weeks beginning on the date when 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 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.

References by co-proprietors under section 8(1)(b) or 12(1)(b)

8.-(1) A reference under section 8(1)(b) or 12(1)(b) 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 nature of the question, the facts relied upon by the co-proprietor making. the reference and the order which is seeking.

(2) The comptroller shall send a copy of the reference and statement to-

(a) each co-proprietor who is not a party to the reference and who has not otherwise indicated his consent to the making of the order sought;
(b) any person to whom it is alleged in the reference that any right in or under an application for a patent should be transferred or granted;
(c) any person, not being a party to the reference, who is shown in the register as having a right in or under the patent application;
(d) where the application for the patent has not been published, any person (not being a party to the reference) who has given notice to the comptroller of a relevant transaction, instrument or event; and
(e) every person who has been identified in the patent application or a statement filed under section 13( 2)(a) as being, or being believed to be, the inventor or joint inventor of the invention.

other than the co-proprietor making the reference under section 8(1)(b) or 12(1)(b)

(3) Any person who receives a copy of the reference and statement and who wishes to oppose the order sought may, within the period of six weeks beginning on the date when the copies are sent to him, file a counter-statement in duplicate setting out fully the grounds of his opposition.

(4) The comptroller shall, as appropriate, send a copy of any counter-statement to-

(a) each co-proprietor who is a party to the reference; and
(b) any person to whom a copy of the reference and statement were sent pursuant to paragraph (2) above.

(5) Any person who receives a copy of the counter-statement may, within the period of six weeks beginning on the date when the copy is sent to him, file evidence in support of his case and shall send a copy of the evidence so filed to the co-proprietor making the reference and to each person who has filed a counter-statement.

(6) Any person entitled to receive a copy of the evidence filed under paragraph (5) above may, within the period of six weeks beginning on the date when the copy is sent to him or, if no such evidence is filed, within six weeks of the expiration of the period within which it might have been filed, file evidence in support of his case and shall send a copy of the evidence so filed to each of the other parties listed in paragraph (4) above.

(7) Any person who receives a copy of the evidence filed under paragraph (6) above may, within the period of six weeks of the date when the copy is sent to him, file further evidence confined to matters strictly in reply and shall as appropriate send a copy of the evidence so filed to the parties listed in paragraph (4) above.

(8) No further evidence shall be filed by any 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.

Orders under section 8 or 12

9.-(1) Where an order is made under section 8 or 12 -

(a) that an application for a patent shall proceed in the name of one or more persons none of whom was an original applicant; or
(b) that a new application for a patent may be made,

the comptroller shall give notice of the making of the order to the original applicant or applicants, and to any of their licensees of whom he is aware.

(2) A person who makes a request under section 11(3) or (3A) must do so before the end of the relevant period.

(3) The relevant period is -

(a) where the request is made by an original applicant, the period of two months starting on the date the notice is sent to him;
(b) where the request is made by a licensee, the period of four months starting on the date the notice is sent to him.

(4) In this rule, a reference to section 11 includes a reference to that section as applied by section 12(5).

Prescribed period for new applications under section 8(3) or 12(6)

10. The prescribed period for the purposes of sections 8(3) and 12(6) shall be three months calculated from the day on which the time for appealing from an order made under either of those subsections expires without an appeal being brought or, where an appeal is brought, from the day on which it is finally disposed of.

Authorisation under section 8(5)

11.-(1) An application under section 8(5) for authority to do anything on behalf of a person to whom directions have been given under section 8(2)(d) or (4) 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.

Request by joint applicant under section 10 or 12(4)

12.-(1) A request under section 10 or section 12(4) by a joint applicant 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 he relies and the directions which he seeks.

(2) The comptroller shall send a copy of the request and statement to each other joint applicant who shall, if he wishes to oppose the request, within the period of six weeks beginning on the date when such copies are sent to him, file in duplicate a counter-statement setting out fully the grounds of his opposition; and the comptroller shall send a copy of the counter-statement to the person making the request and to each other joint applicant who is not party to the counter-statement.

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

Reference to the comptroller under section 11(5)

13.-(1) A reference under section 11(5) shall be made on Patents Form 2/77 and shall be accompanied by a copy and by a statement in duplicate setting out fully -

(a) the question referred;
(b) the facts upon which the person making the reference relies; and
(c) the period or terms of the licence which he is prepared to accept or grant.

(2) The comptroller shall send, except to the person who made the reference, a copy of the reference and statement to -

(a) every person in whose name the application is to proceed or, as the case may be, who makes the new application; and
(b) every person claiming to be entitled to be granted a licence,

and any such person who receives a copy of the reference and statement may, before the end of the period of six weeks starting on the date the copies were sent to him, file a counter-statement (which must be in duplicate) setting out fully his grounds of objection.

(3) The comptroller shall send a copy of the counter-statement to the person who made the reference.

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

(5) In this rule, a reference to section 11 includes a reference to that section as applied by section 12(5).

INVENTORS

 

Mention of inventor under section 13

14.-(1) An application to the comptroller under section 13(1) or (3) by any person who

alleges-

(a) that any person ought to have been mentioned as the inventor or joint inventor of an invention in any patent granted or published application for a patent for the invention; or
(b) that any person mentioned as sole or joint inventor in any patent granted or published application for a patent for the invention ought not to have been so mentioned,

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 comptroller shall send a copy of any such application and statement to-

(a) every person registered as proprietor of, or applicant for, the patent;
(b) every person who has been identified in the patent application or a statement filed under section 13( 2)(a) as being, or being believed to be, the inventor or joint inventor of the invention; and
(c) every other person whose interests the comptroller considers may be affected by the application;

other than the applicant under section 13( 1) or (3) and any person who has consented in writing to the application.

(3) Any recipient of such a copy of an application and statement who wishes to oppose the application shall, within the period of six weeks beginning on the date when the copies are sent to him, file a counter-statement in duplicate setting out fully the grounds of his objection and the comptroller shall send a copy of the counter-statement to each of the persons described in this rule other than any person who is party to the counter-statement.

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

(5) The document prescribed for the purposes of section 13(1) shall be an addendum or erratum.

(6) This procedure shall not apply where the question of inventorship by the inventor or joint inventor is put in issue by a reference under section 8 or 37.

Procedure where applicant is not the inventor or sole inventor

15.-(1) Subject to rules 26, 81(3), 82(3), 85(7) and 85(7A)(a), the period prescribed for the purposes of section 13(2) shall be -

(a) where there is no declared priority date, the period of sixteen months starting on the date of filing the application;
(b) where there is a declared priority date, the period of sixteen months starting on that date.

(1A) A statement filed under section 13 (2) shall be made on Patents Form 7/77.

(2) Where the applicant is not the sole inventor or the applicants are not the joint inventors of the invention the subject of the application and the application does not contain a declared priority date which relates to an earlier relevant application as defined in section 5( 5)(b), a sufficient number of copies of Patents Form 7/77 shall be filed by the applicant or applicants within the said period to enable the comptroller to send one to each inventor who is not one of the applicants.

(3) NO LONGER HAS EFFECT, PATENTS (AMENDMENT) RULES 2004

(4) NO LONGER HAS EFFECT, PATENTS (AMENDMENT) RULES 2004

Waiving the right to be mentioned

15A.-(1) The inventor may, before preparations for the application's publication have been completed by the Patent Office, apply to the comptroller in writing to waive his right-

(a) to have his name and address mentioned as those of the inventor; or
(b) to have his address mentioned as that of the inventor.

(2) An application by an inventor under paragraph (1)(a)-

(a) shall include his reasons for making the application; and
(b) shall be accepted by the comptroller where the comptroller is satisfied by those reasons.

(3) An application by an inventor under paragraph (1)(b) shall be accepted by the comptroller.

(4) Where the comptroller has accepted an inventor's application to make a waiver under this rule, the inventor may apply to the comptroller to end that waiver.

(5) The comptroller may, if he thinks fit, accept an application to end a waiver, and his acceptance may be made subject to such conditions as he may direct.

(6) An application under paragraph (1)(a) or (b) or under paragraph (4) may also be made by a person who is not the inventor, but who has been identified as such for the purposes of section 13(2).

(7)Where a person makes an application in reliance on paragraph (6), the reference in this rule to an application to waive his right to have his name and address (or his address) mentioned shall be construed as a reference to an application not to have his name and address (or his address) mentioned (and paragraphs (4) and (5) are to be construed accordingly).

APPLICATIONS FOR PATENTS

Applications for the grant of patents under sections 14 and 15

16.-(1) A request for the grant of a patent shall be made on Patents Form 1/77.

(1A) Where the documents filed at the Patent Office to initiate an application for a patent did not include the applicant's name and address, the comptroller shall notify the applicant that his name and address are required.

(1B) Where the applicant has been notified under paragraph (1A), he shall, before the end of the period of two months starting on the date of the notification, file his name and address; otherwise the comptroller may refuse his application

(2) The specification contained in an application for a patent made under section 14 shall state the title of the invention and continue with the description and the claim or claims and drawings, if any, in that order, but, where the application is delivered in electronic form or using electronic communications, that order shall not apply to the extent that it has been removed or varied by the comptroller in directions made under section 124A and the specification shall comply with such directions.

(3) The title shall be short and indicate the matter to which the invention relates.

(4) The description shall include a list briefly describing the figures in the drawings, if any.

(5) Where -

(a) the documents filed at the Patent Office to initiate an application for a patent include something which is or appears to be a description of the invention in a language other than English; and
(b) the applicant has not filed -

(i) a translation into English of that thing; or
(ii) a description of the invention in English, with a declaration that it is a complete and accurate translation into English of that thing,

the comptroller shall notify the applicant that a translation or a description with a declaration is required.

(6) Where the applicant has been notified under paragraph (5), he shall, before the end of the period of two months starting on the date of the notification, file either a translation or a description with a declaration; otherwise the comptroller may refuse his application.

Biological material

17. Schedule 2 shall have effect in relation to certain applications for patents, and patents, for inventions which involve the use of or concern biological material.

Drawings

18.-(1) Drawings forming part of an application for a patent made under section 14 shall be on sheets the usable surface area of which shall not exceed 26.2 cm by 17 cm. The sheets shall not contain frames round the usable or used surface. The minimum margins shall be as follows-

top 2.5 cm

left side 2.5 cm

right side 1.5 cm

bottom 1.0 cm

(2) Drawings shall be executed as follows-

(a) without colouring in durable, black, sufficiently dense and dark, uniformly thick and well-defined lines and strokes to permit satisfactory reproduction;
(b) cross-sections shall be indicated by hatching which does not impede the clear reading of the reference signs and leading lines;
(c) the scale of the drawings and the distinctness of their graphical execution shall be such that a photographic reproduction with a linear reduction in size to two-thirds would enable all details to be distinguished without difficulty. If, as an exception, the scale is given on a drawing, it shall be represented graphically;
(d) all numbers, letters, and reference signs, appearing on the drawings shall be simple and clear and brackets, circles and inverted commas shall not be used in association with numbers and letters;
(e) elements of the same figure shall be in proportion to each other, unless a difference in proportion is indispensable for the clarity of the figure;
(f) the height of the numbers and letters shall not be less than 0.32 cm and for the lettering of drawings, the Latin and, where customary, the Greek alphabets shall be used;
(g) the same sheet of drawings may contain several figures. Where figures drawn on two or more sheets are intended to form one whole figure, the figures on the several sheets shall be so arranged that the whole figure can be assembled without concealing any part of the partial figures. The different figures shall be arranged without wasting space, clearly separated from one another. The different figures shall be numbered consecutively in arabic numerals, independently of the numbering of the sheets;
(h) reference signs not mentioned in the description or claims shall not appear in the drawings, and vice versa. The same features, when denoted by reference signs, shall, throughout the application, be denoted by the same signs;
(i) the drawings shall not contain textual matter, except, when required for the understanding of the drawings, a single word or words such as "water", "steam", "open", "closed", "section on AA", and, in the case of electric circuits and block schematic or flow sheet diagrams, a few short catchwords; and
(j) the sheets of the drawings shall be numbered in accordance with rule 20( 9).

(3) Flow sheets and diagrams shall be considered to be drawings for the purposes of these Rules.

(4) Where the application for a patent is delivered in electronic form or using electronic communications, paragraphs (1) and (2) shall not apply to the extent that they have been removed or varied by the comptroller in directions made under section 124A and drawings forming part of that application shall comply with such directions.

The abstract

19.-(1) The abstract shall commence with a title for the invention.

(2) The abstract shall contain a concise summary of the matter contained in the specification. The summary shall indicate the technical field to which the invention belongs and be drafted in a way which allows a clear understanding of the technical problem to which the invention relates, the gist of the solution to that problem through the invention and the principal use or uses of the invention. Where appropriate, the abstract shall also contain the chemical formula which, among those contained in the specification, best characterises the invention. It shall not contain statements on the alleged merits or value of the invention or on its speculative application.

(3) The abstract shall normally not contain more than 150 words.

(4) If the specification contains any drawings, the applicant shall indicate on the abstract the figure or, exceptionally, the figures of the drawings which he suggests should accompany the abstract when published. The comptroller may decide to publish one or more other figures if he considers that they better characterise the invention. Each main feature mentioned in the abstract and illustrated by a drawing shall be followed by the reference sign used in that drawing.

(5) The abstract shall be so drafted that it constitutes an efficient instrument for the purposes of searching in the particular technical field, in particular by making it possible to assess whether there is a need to consult the specification itself.

Size and presentation of documents

20.-(1) All documents (including drawings) making up an application for a patent or replacing such documents shall be in the English language.

(2) [Repealed by The Patents (Amendment) Rules 2007 (SI 2007 No. 677)]

(3) All documents referred to in paragraph (1) above shall be so presented as to permit of direct reproduction by photography, electrostatic processes, photo offset and micro-filming, in an unlimited number of copies. All sheets shall be free from cracks, creases and folds. Only one side of the sheet shall be used, except in the case of a request for the grant of a patent.

(4) All documents referred to in paragraph (1) above shall be on A4 paper (29.7 em x 21 cm) which shall be pliable, strong, white, smooth, matt and durable. Each sheet (other than drawings) shall be used with its short sides at the top and bottom (upright position).

(5) The request for the grant of a patent and the description, claims, drawings and abstract shall each commence on a new sheet. The sheets shall be connected in such a way that they can easily be turned over, separated and joined together again.

(6) Subject to rule 18(1), the minimum margins shall be as follows:

top 2.0 cm
left side 2.5 cm
right side 2.0 cm
bottom 2.0 cm

(7) The margins of the documents making up the application and of any replacement documents must be completely blank.

(8) In the application, except in the drawings-

(a) all sheets in the request shall be numbered consecutively; and
(b) all other sheets shall be numbered consecutively as a separate series,

and all such numbering shall be in arabic numerals placed at the top of the sheet, in the middle, but not in the top margin.

(9) All sheets of drawings contained in the application shall be numbered consecutively as a separate series. Such numbering shall be in arabic numerals placed at the top of the sheet, in the middle, but not in the top margin.

(10) Every document (other than drawings) referred to in paragraph (l) above shall be typed or printed in a dark, indelible colour in at least 1 1/2; line spacing and in characters of which the capital letters are not less than 0.21 cm high:

Provided that Patents Form 1/77 may be completed in writing, and that graphic symbols and characters and chemical and mathematical formulae may be written or drawn, in a dark indelible colour.

(11) The request for the grant of a patent, the description, the claims and the abstract shall not contain drawings. The description, the claims and the abstract may contain chemical or mathematical formulae. The description and the abstract may contain tables. The claims may contain tables only if their subject-matter makes the use of tables desirable.

(12) In all documents referred to in paragraph (1) above units of weight and measures shall be expressed in terms of the metric system. If a different system is used they shall also be expressed in terms of the metric system. Temperatures shall be expressed in degrees Celsius. For the other physical values, the units recognised in international practice shall be used, for mathematical formulae the symbols in general use, and for chemical formulae the symbols, atomic weights and molecular formulae in general use shall be employed. In general, use should be made of technical terms, signs and symbols generally accepted in the field in question.

(13) If a formula or symbol is used in the specification a copy thereof, prepared in the same manner as drawings, shall be furnished if the comptroller so directs

(14) The terminology and the signs shall be consistent throughout the application.

(15) All documents referred to in paragraph (l) above shall be reasonably free from deletions and other alterations, overwritings and interlineations and shall, in any event, be legible.

(16) Where the application for a patent is delivered in electronic form or using electronic communications, paragraphs (2) to (10), (13) and (15) shall not apply to the extent that they have been removed or varied by the comptroller in directions made under section 124A and the application shall comply with such directions.

Form of statements, counter-statements and evidence

21. Any statement, counter-statement or evidence filed shall, unless the comptroller otherwise directs, comply with the requirements of rule 20( 1) and (4) and, except that both sides of the sheet may be used in the case of statutory declarations and affidavits, with the requirements of rule 20(3).

Unity of invention

22.- (1) Without prejudice to the generality of section 14(5)(d), where two or more inventions are claimed (whether in a single claim or in separate claims), and there exists between or among those inventions a technical relationship which involves one or more of the same or corresponding special technical features, then those inventions shall be treated as being so linked as to form a single inventive concept for the purposes of the Act.

(2) In this rule, "special technical features" means those technical features which define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.

References under section 15(1)(c)(ii)

22A.-(1) A reference made under section 15(1)(c)(ii) shall include -

(a) the date of filing of the earlier relevant application;
(b) its application number; and
(c) the country in or for which it was made.

(2) Subject to paragraph (3), the copy of the application provided under section 15(10)(b)(ii) shall -

(a) be duly certified by the authority with which it was filed; and
(b) where it is in a language other than English, be accompanied by -

(i) a translation into English of that application; or
(ii) a declaration that the description filed under sub-paragraph (i) of section 15(10)(b) is a complete and accurate translation into English of the description contained in the application provided under sub-paragraph (ii) of that provision.

(3) Where the application or a copy of the application is kept at the Patent Office it shall, for the purposes of section 15(10)(b)(ii), be treated as having been filed in accordance with rules.

Missing parts

23.- (1) Subject to paragraph (2), the period prescribed for the purposes of section 15(5)(b) and (6) shall be the period starting on the date of filing of the application for a patent and ending on the date of the preliminary examination.

(2) Where the applicant is notified under section 15A(9) that a drawing or part of the description of the invention has been found to be missing, the period prescribed for the purposes of section 15(5)(b) and (6) shall be the period of two months starting on the date of the notification.

(3) An applicant may only withdraw a missing part by giving written notice to the comptroller.

(4) A request made under section 15 (7)(b) shall be made in writing and shall -

(a) include sufficient information to identify where in the earlier relevant application or applications the contents of the document filed under section 15(5)(b) were included; and
(b) be made before the end of the period prescribed for the purpose of section 15(5)(b).

(5) Any request under section 15 (7)(b) shall be considered never to have been made where -

(a) the earlier relevant application or applications do not contain every missing part filed under section 15 (5);
(b) the applicant fails to furnish to the Patent Office copies of all earlier relevant applications, duly certified by the authority with which they were filed, before the end of the relevant period.

(6) Paragraph (5)(b) does not apply in respect of an earlier relevant application where that application or a copy of the application is kept at the Patent Office.

(7) The relevant period is the first to expire of -

(a) the period of sixteen months starting on the declared priority date; or
(b) the period of four months starting on the date the request was made under section 15(7)(b).

New applications under section 15(9)

24.-(1) Subject to paragraph (2) below, a new application for a patent, which includes a request that it shall be treated as having as its date of filing the date of filing of an earlier application, may be filed in accordance with section 15(9) not later than the beginning of the third month before the end of the period ascertained under rule 34 in relation to the earlier application as altered, if that be the case, under rule 100 or rule 110 ("the rule 34 period");

Provided that, where the first report of the examiner under section 18 is made under subsection (4) and the comptroller notifies the applicant that the earlier application complies with the requirements of the Act and these Rules, notwithstanding the foregoing provisions of this paragraph but subject to paragraph (2) below, a new application may be filed not later than the expiry of the period of two months beginning on the day that the notification is sent.

(2) Where any of the following dates falls before the date ascertained under paragraph (1) above, a new application may only be filed before that date instead of the date so ascertained-

(a) the date when the earlier application is refused, is withdrawn, is treated as having been withdrawn or is taken to be withdrawn;
(b) the expiry of the rule 34 period ascertained in relation to the earlier application; and
(c) the date when a patent is granted on the earlier application.

Periods prescribed for the purposes of section 15(10) and 17(1)

25.-(1) Subject to paragraph (4), the period prescribed for the purposes of section 15(10)(a) and (b)(i) shall be the relevant period.

(2) Subject to paragraph (4) and rules 81 (3), 82(3), 85(7) and 85(7A)(b), the period prescribed for the purposes of section 15 (10)(c) and (d) and section 17(1) shall be the relevant period.

(3) Subject to paragraph (4), the period prescribed for the purpose of section 15(10)(b)(ii) shall be the period of four months starting on the date of filing.

(4) Where a new application is filed under section 8(3), 12(6), 15(9) or 37(4) after the relevant period has expired -

(a) subject to sub-paragraph (b), the period prescribed for the purposes of section 15(10)(a) to (d) and section 17(1) shall be the period of two months starting on the initiation date; or
(b) where it is filed less than six months before the period prescribed by rule 34 is due to expire (including the expiry of any extension of that period), the period prescribed for the purposes of section 15(10) (a) to (d) and section 17(1) shall end on the initiation date.

(5) The relevant period is -

(a) where there is no declared priority date, the period of twelve months starting on the date of filing of the application; or
(b) where there is a declared priority date, the last to expire of -

(i) the period of twelve months starting on the declared priority date; or
(ii) the period of two months starting on the date of filing of the application.

Extensions for new applications

26. Where a new application is filed under section 8(3), 12(6), 15(9) or 37(4) after the the expiry of the periods prescribed by rule 6B or rule 15(1) (or after the expiry of any extensions of those periods) -

(a) the requirements of rules 6 to 6B and rule 15 shall be complied with on the initiation date;
(b) the requirements of paragraph 1(2)(a)(ii), (2)(a)(iii) and (3) of Schedule 2 shall be complied with on the initiation date (or, if later, before the end of the relevant period ascertained under paragraph 1(3) of that Schedule)

Publication of application

27.-(1) The period prescribed for the purposes of section 16 (1) shall be—

(a) where there is no declared priority date, the period of 18 months beginning with the date of filing of the application; or
(b) where there is a declared priority date, the period of 18 months beginning with that date.

(2) Where a person's application under rule 15A(1)(a) or (b) has been accepted by the comptroller, the comptroller shall ensure that the application for the patent as published under section 16 does not mention his name and address as those of the person believed to be the inventor (or, as the case may be, his address as that of the person so believed).

EXAMINATION AND SEARCH

Preliminary examination under section 15A

28.-(1) On a preliminary examination the examiner shall determine whether the the application complies with the requirements of rules 6 to 6C.

(2) The examiner shall report to the comptroller his determinations under paragraph (1) and the comptroller shall notify the applicant accordingly.

Search under section 17

28A.-(1) A request under section 17 (1)(c)(i) for a search shall be made on Patents Form 9A/77.

(2) The comptroller may, if he thinks fit, send to the applicant a copy of any document (or any part thereof) referred to in the examiner's report made under section 17(5).

Procedure where earlier application made

29.-(1) Where, on a preliminary examination, the examiner finds that a declaration made for the purposes of section 5(2) specifies a date of filing for an earlier relevant application -

(a) more than twelve months before the date of filing of the application in suit; or
(b) where the comptroller has given permission for a late declaration to be made under section 5 (2), more than fourteen months before the date of filing of the application in suit,

he shall report this finding to the comptroller and the comptroller shall notify the applicant accordingly.

(2) Where the comptroller has notified the applicant under paragraph (1), the applicant shall, before the end of the relevant period, provide the comptroller with a corrected date; otherwise the declaration, in so far as it relates to the earlier relevant application, shall be disregarded.

(3) The relevant period is the period of two months starting on the date of the notification under paragraph (2).

(4) For the purposes of paragraph (2), "corrected date" means a date that would not have been reported by the examiner under paragraph (1).

Address for service

30.-(1) For the purposes of any proceeding under the Act or these Rules, an address for service shall by filed by -

(a) an applicant for the grant of a patent;

(b) a person who makes any other application or reference, or gives any notice of opposition, under the Act;

(c) any person opposing such an application, notice or reference.

(2) The proprietor of a patent, or any person who has registered any right in or under a patent or application, may file an address for service by notifying the comptroller.

(3) Where a person has provided an address for service under paragraph (1) or (2), he may substitute a new address for service by notifying the comptroller.

(4) An address for service filed under paragraph (1)(a) or (2) shall be an address in the United Kingdom, another EEA State or the Channel Islands.

(5) An address for service filed under paragraph (1)(b) or (c) shall be an address in the United Kingdom, unless in a particular case the comptroller otherwise directs.

Failure to provide an address for service

30A.-(1) Where -

(a) a person has failed to file an address for service under rule 30(1); and

(b) the comptroller has sufficient information enabling him to contact that person,

the comptroller shall direct that person to file an address for service.

(2) Where a direction has been issued under paragraph (1), the person directed shall, before the end of the period of 2 months beginning with the date of the direction, file an address for service.

(3) Paragraph (4) applies where -

(a) a direction was given under paragraph (1) and the period prescribed by paragraph (2) has expired; or

(b) the comptroller has insufficient information to give a direction under paragraph (1),

and the person has failed to provide an address for service.

(4) Where this paragraph applies -

(a) in the case of an applicant for the grant of a patent, the application shall be treated as withdrawn; and

(b) in the case of a person mentioned in rule 30(1)(b), his application, reference or notice of opposition shall be withdrawn; and

(c) in the case of a person mentioned in rule 30(1)(c), he shall be deemed to have withdrawn from the proceedings.

(5) In this rule an “address for service” means an address which complies with the requirements of rule 30(4) or (5).

Formal requirements

31.-(1) The requirements of rules 16(1), 18(1) and (2) (other than those contained in paragraph (2)(h)), 20 (other than those contained in the last sentence of paragraph (11) and in paragraphs (12) and (14)) shall be formal requirements for the purposes of the Act.

(1A) Where any of the requirements referred to in paragraph (1) do not apply by virtue of rule 18(4) or rule 20(16), the formal requirements for the purposes of the Act shall include the requirements of so much of any directions given by the comptroller under section 124A as replace those requirements.

(2) Where the application is-

(a) an application for a European patent (UK); or
(b) an international application for a patent (UK)

which, by virtue of section 81 or 89, as the case may be, is to be treated as an application for a patent under the Act, the said requirements of rules 16(1), 18(1) and (2) and 20 shall be treated as having been complied with to the extent that the requirements of the corresponding provisions of the Implementing Regulations to the European Patent Convention or, as the case may be, of the Regulations made under the Patent Co-operation Treaty, have been fulfilled.

Searches under section 17(6) and (8)

32.-(1) Where an examiner conducts a search under section 17(6) in relation to the first only of two or more inventions specified in the claims of an application, the Patent Office shall notify the applicant of that fact.

(2) If the applicant desires a search to be conducted under section 17(6) in relation to a second or subsequent invention specified in the claims, he shall, not later than the beginning of the third month before the end of the period prescribed under rule 34, as altered, if that be the case, under rule 100 or rule 110, request the Patent Office on Patents Form 9A/77 to conduct such a search and pay the search fee for each invention in respect of which the search is to be made.

(3) The fee for a supplementary search under section 17(8) shall be accompanied by Patents Form 9A/77.

(4) The comptroller may, if he thinks fit, send to the applicant a copy of any document (or any part thereof referred to in the examiner's report under section 17 pursuant to subsection (6) or (8) thereof.

Request for substantive examination under section 18

33.-(1) A request for a substantive examination of an application for a patent shall be made on Patents Form 10/77.

(2) Subject to the provisions of rules 83( 1), 85(7), 85 (7A)(c) and paragraphs (3) and (5) below, the request shall be made and the fee for the examination paid within six months of the date of publication of the application in accordance with section 16.

(3) Where an application is subject to directions under section 22(1) or (2), the request shall be made and the fee paid within two years of the declared priority date or, where there is no declared priority date, from the date of filing the application except in the case of a new application made under section 8( 3), 12(6) or 15(9) after the expiry of the said two years, when the request shall be made and the fee paid at the time of filing the new application.

(4) When he gives the applicant the opportunity under section 18(3) to make observations on the examiner's report under subsection (2) of that section, the comptroller may, if he thinks fit, send to the applicant a copy of any document (or part thereof) referred to in the report.

(5) Where a new application is filed under section 8(3), 12(6), 15 (9) or 37(4) then,-

(a) if the new application is filed within two years calculated from the declared priority date or, where there is no declared priority date, from the date treated as its date of filing, the request shall be made and the fee for the examination paid within those two years; and
(b) if the new application is filed after the expiration of those two years, the request shall be made and the fee for the examination paid at the time of filing the new application.

Period for putting application in order

34.-(1) Subject to the provisions of paragraph (2) below and of rule 83( 3), for the purposes of sections 18( 4) and 20(1), the period within which an application for a patent shall comply with the Act and these Rules-

(a) subject to sub-paragraphs (b) and (c) hereof and paragraph (1A) below, shall be-

(i) the period of four years and six months calculated from its declared priority date or, where there is no declared priority date, from the date of filing of the application; or
(ii) the period of twelve months calculated from the date the first report under section 18 in respect of that application is sent to the applicant, whichever expires the later;

(b) in the case of a new application for a patent arising from and made in accordance with an order of the comptroller under section 8(3), 12 (6) or 37(4), shall be-

(i) the period of four years and six months calculated from the declared priority date for the earlier application or, where there is no such declared priority date, the date of filing of the earlier application; or
(ii) the period of eighteen months calculated from the actual date of filing of the application,

whichever expires the later;

(c) in the case of a new application under section 15(9), shall be the period determined in accordance with sub-paragraph (a) above in respect of the earlier application whose date of filing is to be treated under section 15(9) as the date of filing of the new application.

(1A) Where the first report under section 18 is not sent to the applicant before the expiry of the period prescribed by sub-paragraph (a)(i) of paragraph (1) above, that period shall be extended to such date as that report is sent to the applicant and the period specified by subparagraph (a)(ii) of paragraph (1) shall then apply.

(2) In a case where,-

(a) a third party makes observations under section 21 on an application;
(b) the examiner, for the first time in a report under section 18(3), relies upon the substance of those observations to report that the patentability requirements of the Act are not met; and
(c) following that report, and within the last three months of the period ascertained under paragraph (1) above (including any alteration thereof under rule100 or rule 110) the comptroller gives the applicant the opportunity under section 18(3) to make observations on the report and to amend the application,

the period within which an application for a patent shall comply with the Act and these Rules shall expire at the end of the period of three months beginning on the date when the comptroller sends notification to the applicant of that opportunity.

Amendment of request for grant

35. Subject to rule 45(3), an application for amendment of the request for the grant of a patent shall-

(a) be made on Patents Form 11/77;
(b) clearly identify the proposed amendment; and
(c) state the reasons for it.

Amendment of application before grant

36.-(1) An applicant may not amend the description, claims and drawings contained in his application except in accordance with the following provisions of this rule.

(2) Unless the comptroller so requires or consents, the applicant may not so amend before the comptroller sends to the applicant the examiner's report under section 17(5).

(3) After the comptroller has sent to the applicant the examiner's report under section 17(5) and before he sends to the applicant the first report of the examiner under section 18, the applicant may so amend of his own volition.

(4) After the comptroller has sent to the applicant the examiner's first report under section 18, the applicant may so amend once of his own volition provided that-

(a) where the report is made under-
(i) section 18(3), the amendment is filed at the same time as the applicant replies to that report, or
(ii) section 18( 4), the amendment is filed within two months of that report being sent to the applicant,

except that-

(b) where the report referred to in sub-paragraph (a)(i) is made before preparations for publication of the application have been completed, the applicant may, in addition and prior to the amendment which may be made in accordance with that subparagraph, amend of his own volition the description, claims or drawings.

(5) The right to amend set out in paragraph (4) is in addition to an applicant's right under section 18(3) to amend the application so as to comply with the requirements of the Act and these Rules.

(6) Any further amendment to the description, claims or drawings which the applicant desires to make of his own volition may be made only with the consent of the comptroller following the filing of Patents Form 11/77 clearly identifying the proposed amendment and stating the reasons for it.

Reinstatement of applications under section 20A

36A.- (1) Any request under section 20A for the reinstatement of an application shall be made before the end of the relevant period.

(2) The relevant period is the first to expire of -

(a) the period of twelve months starting on the date on which the application was terminated; or
(b) the period of two months starting on the date on which the removal of the cause of non-compliance occurred.

(3) The request shall be made on Patents Form 14/77 supported by evidence of the statements made in it.

(4) Where the comptroller is required to publish a notice under section 20A(5), it shall be published in the Journal.

(5) Where, upon consideration of the evidence provided in accordance with paragraph (3), the comptroller is not satisfied that a case for an order under section 20A has been made out, he shall notify the applicant accordingly.

(6) Where the comptroller has notified the applicant under paragraph (5), the applicant may, before the end of the period of one month starting on the date of the notification, request to be heard by the comptroller.

(7) Where the applicant requests a hearing under paragraph (6), the comptroller shall give the applicant an opportunity to be heard, after which he shall determine whether the request under section 20A shall be allowed or refused.

(8) Where the comptroller reinstates the application after a notice was published under paragraph (4), he shall advertise in the Journal the fact that he has reinstated the application.

(9) In determining the date on which the removal of the cause of non-compliance occurred, the comptroller shall have regard to any relevant principles applicable under the European Patent Convention.

Observations on patentability under section 21

37.-(1) Subject to paragraph (2) below, the comptroller shall send to the applicant a copy of-

(a) any document containing observations which he receives under section 21 in connection with the application; and
(b) any document referred to in any such observations being a document which he receives from the person making them.

(2) Nothing in paragraph (1) above shall impose any duty on the comptroller in relation to any document-

(a) a copy of which it appears to the comptroller is readily available for retention by the applicant; or
(b) which in his opinion is not suitable for photocopying, whether on account of size or for any other reason.

(3) If the period ascertained under rule 34 (as altered, if that be the case, under rule 100 or rule 110) has not expired and the comptroller has not sent to the applicant notice in accordance with section 18(4) that the application complies with the requirements of the Act and these Rules, the observations shall be referred to the examiner conducting a substantive examination of the application under section 18; and the examiner shall consider and comment upon them as he thinks fit in his report under that section.

GRANT, AMENDMENT AND CONTINUATION OF PATENT

Certificates of grant

38. A certificate that a patent has been granted shall be in a form which includes the name of the proprietor of the patent and the date of filing of the application.

Renewal of patents: general

39. -(1) In this rule and in rules 39A to 39C-

"prescribed period" means the period prescribed by rule 39A or 39B for the payment of a renewal fee;

"renewal date" has the meaning given in rules 39A(2) to (4) and 39B(3);

"renewal fee" means the fee prescribed in respect of a renewal date[9].

(2) If the renewal fee is not paid by the end of the prescribed period, the patent shall cease to have effect at the end of the renewal date.

(3) Subject to paragraph (4), Patents Form 12/77 must be filed within the prescribed period.

(4) Where payment is made pursuant to section 25(4)[10], Patents Form 12/77 must accompany the renewal fee and the prescribed additional fee.

(5) On receipt of the renewal fee the comptroller shall issue a certificate of payment.

Renewal of patents: first renewal

39A. -(1) This rule prescribes the period for the payment of a renewal fee in respect of the first renewal date.

(2) Subject to paragraphs (3) and (4)-

(a) the first renewal date is the fourth anniversary of the date of filing; and
(b) the prescribed period is the period of three months ending with the last day of the month in which that renewal date falls.

(3) Where a patent is granted under the Act in the period of three months ending with the fourth anniversary of the date of filing, or at any time after that anniversary-

(a) the first renewal date is the last day of the period of three months beginning with the date on which the patent was granted; and
(b) the prescribed period begins with the date on which the patent was granted and ends with the last day of the month in which that renewal date falls.

(4) Where the grant of a patent is mentioned in the European Patent Bulletin in the period of three months ending with the fourth anniversary of the date of filing, or at any time after that anniversary-

(a) the first renewal date is the later of-

(i) the last day of the period of three months beginning with the date on which the grant of the patent was mentioned in the European Patent Bulletin (case A); or
(ii) the next anniversary of the date of filing to fall after the date on which the grant of the patent was so mentioned (case B); and

(b) the prescribed period is-

(i) in case A, the period beginning with the date on which the grant of the patent was mentioned in the European Patent Bulletin and ending with the last day of the month in which the first renewal date falls; or
(ii) in case B, the period of three months ending with the last day of the month in which the first renewal date falls.

Renewal of patents: subsequent renewals

39B. -(1) This rule prescribes the period for the payment of a renewal fee in respect of renewal dates subsequent to the first renewal date.

(2) The prescribed period is the period of three months ending with the last day of the month in which the renewal date falls.

(3) For those purposes-

(a) the second renewal date is the next anniversary of the date of filing to fall after the first renewal date; and
(b) each subsequent renewal date is the anniversary of the previous renewal date.

Renewal notice

39C. -(1) This rule applies where the renewal fee has not been received by the end of the prescribed period.

(2) The comptroller shall, within the period of six weeks immediately following the end of the prescribed period, and if the fee remains unpaid, send a renewal notice to the proprietor of the patent.

(3) The comptroller shall send the renewal notice to-

(a) the address specified by the proprietor on payment of the last renewal fee (or to another address that has since been notified to him for that purpose by the proprietor); or
(b) where such an address has not been so specified or notified, the address for service entered in the register.

(4) The renewal notice shall remind the proprietor of the patent-

(a) that payment is overdue; and
(b) of the consequences of non-payment.

Amendment of specification after grant

40.-(1)An application to the comptroller for leave to amend the specification of a patent shall -

(a) be made on Patents Form 11/77, and
(b) clearly identify the proposed amendment and state the reasons for it.

(1A) If it is reasonably possible, the proposed amendment and the reasons for it shall also be set out and delivered to the comptroller in electronic form or using electronic communications.

(1B) The comptroller shall advertise in the Journal notice that an application has been made to amend the specification of a patent, and the advertisement shall state that any person may apply to the comptroller for a copy of the proposed amendment and the reasons given for it.

(2) At any time within two months from the date of the advertisement in the Journal, any person may give notice to the comptroller of opposition to the application to amend 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 of the statement to the applicant.

(4) Within the period of six weeks beginning on the date when such copies are sent to him, the applicant shall, if he wishes to continue with the application, file a counter-statement in duplicate setting out fully the grounds upon which the opposition is resisted; and the comptroller shall send a copy of the counter-statement to the opponent.

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

(6) An application under this rule shall be accompanied by-

(a) if the specification as published is not in English, a document containing a translation into English of the part of the specification proposed to be amended and a translation into English of the part as proposed to be amended; and
(b) in the case of an application for amendment of a European patent (UK), a copy of the specification for that patent as published,

and, if the specification as published is not in English, the applicant shall, if the comptroller so requests, supply a translation thereof into English.

(7) The comptroller may, if he thinks fit, require that the amendment be shown on a copy of the specification of which amendment is sought.

(8) Where leave to amend a specification is given, the applicant shall, if the comptroller so requires, and within a time to be fixed by him, file a new specification as amended, which shall be prepared in accordance with rules 16,18 and 20.

Restoration of lapsed patents under section 28

41.-(1) An application under section 28 for the restoration of a patent-

(a) may be made at any time during the period ending with the thirteenth month after the end of the period specified in section 25(4); and
(b) shall be made on Patents Form 16/77 supported by evidence of the statements made in it;

and the comptroller shall publish in the Journal notice of the making of the application.

(2) If, upon consideration of the evidence, the comptroller is not satisfied that a case for an order under section 28 has been made out, he shall notify the applicant accordingly and, unless within one month the applicant requests to be heard in the matter, the comptroller shall refuse the application.

(3) If the applicant requests a hearing within the time allowed, the comptroller shall, after giving the applicant an opportunity of being heard, determine whether the application shall be allowed or refused.

(4) If the comptroller decides to allow the application, he shall notify the applicant accordingly and require him, within two months after the notification is sent to him, to file Patents Form 53/77, together with Patents Form 12/77, duly completed, and the amount of any unpaid renewal fee, upon receipt of which the comptroller shall order the restoration of the patent and advertise the fact in the Journal .

Notification of lapsed patent

42. -(1) This rule applies where—

(a) a patent has ceased to have effect because a renewal fee has not been paid by the end of the period prescribed by rule 39A or 39B, and
(b) the renewal fee and the prescribed additional fee have not been paid by the end of the period specified in section 25 (4) ("the extended period").

(2) The comptroller shall, within the period of six weeks immediately following the end of the extended period, send a notice to the proprietor of the patent—

(a) stating that the extended period has expired, and
(b) referring him to the provisions of section 28.

(3) The comptroller shall send the notice to the address specified by rule 39C(3).

Surrender of patents

43.-(1) A notice of an offer by a proprietor of a patent under section 29 to surrender his patent shall be-

(a) given in writing accompanied by:
(i) a declaration that no action is pending before the court for infringement or for revocation of the patent; or
(ii) if an action before the court is pending full particulars of the action in writing;

and

(b) advertised by the comptroller in the Journal.

(2) At any time within two months from the advertisement any person may give notice of

opposition to the surrender to the comptroller 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 of the statement to the proprietor of the patent.

(4) Within the period of six weeks beginning on the date when such copies are sent to him, the proprietor of the patent shall, if he wishes to continue with the surrender, file a counterstatement in duplicate setting out fully the grounds upon which the opposition is resisted; and the comptroller shall send a copy of the counter-statement to the opponent.

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

REGISTRATION

Entries in the register

44.-(1) No entry shall be made in the register in respect of any application for a patent before the application has been published in accordance with section 16.

(2) Subject to paragraph (2A), upon such publication the comptroller shall cause to be entered in the register-

(a) the name and address of the applicant or applicants;
(b) the name and address of the person or persons stated by the applicant or applicants to be believed to be the inventor or inventors;
(c) the title of the invention;
(d) the date of filing and the file number of the application for the patent;
(e) the date of filing and the file number of any application declared for the purposes of section 5(2) or 127(4) and the country in or for which the application was made;
(f) the date on which the application was published; and
(g) the address for service of the applicant or applicants.

(2A) Where a person's application under rule 15A(1)(a) or (b) has been accepted by the comptroller, the comptroller may omit from the register his name and address (or, as the case may be, his address) as that of the person believed to be the inventor.

(3) The comptroller shall also cause to be entered in the register-

(a) the date of filing of the request for substantive examination;
(b) the date on which the application is withdrawn, taken to be withdrawn, treated as having been withdrawn, refused or treated as having been refused;
(c) the date on which the patent is granted;
(d) the name and address of the person or persons to whom the patent is granted if different to the entries made in accordance with paragraph (2)(a) above;
(e) the address for service if different to the entry made in accordance with paragraph (2)(g) above; and
(f) notice of any transaction, instrument or event referred to in section 33(3).

(4) The comptroller may at any time enter in the register such other particulars as he may think fit.

Alteration of name or address

45.-(1) A request by any person, upon the alteration of his name, for that alteration to be entered in the register or on any application or other document filed at the Patent Office shall be made on Patents Form 20/77.

(2) Where the comptroller has doubts about whether he should make the alteration to a name -

(a) he shall inform the person making the request of the reason for his doubts; and
(b) he may require that person to furnish proof in support of the request

(3) A request by any person for the alteration or correction of his address or address for service entered in the register or on any application or other document filed at the Patent Office shall, if not made on a form filed under any provision of these Rules, be made in writing and shall identify any relevant application or patent.

(4) If the comptroller is satisfied that a request to alter a name or to alter or correct an address or address for service may be allowed, he shall cause the register, application or other document to be altered accordingly.

Registrations under section 33

46.-(1) An application to register, or to give notice to the comptroller of, any transaction, instrument or event to which section 33 applies shall be made on Patents Form 21/77.

(2) An application under paragraph (1) above shall-

(a) where it relates to an assignment or assignation referred to in section 33(3)(a) or (c), be signed by or on behalf of the parties thereto or the assignor only;
(b) where it relates to a mortgage or the granting of a licence or sub-licence or security referred to in section 33( 3)(b) or (c), be signed by or on behalf of the mortgagor or the -grantor of the licence or security, as the case may be;

or be accompanied by documentation establishing the transaction, instrument or event.

(3) The comptroller may direct that such documentation as he may require in connection with the application shall be sent to him within such period as he may specify.

Request for correction of error

47.-(1) Without prejudice to rule 45(3), a request for the correction of an error in the register or in any document filed at the Patent Office in connection with registration shall be made on Patents Form 11/77; and the correction shall be clearly identified on a document annexed to the form or, if not, on the form itself.

(2) Where the comptroller has doubts about whether there is an error -

(a) he shall inform the person making the request of the reason for his doubts; and
(b) he may require that person to furnish a written explanation of the nature of the error or evidence in support of the request.

(3) Where the comptroller is satisfied that an error has been made he shall make such correction as he may agree with the proprietor of the patent (or, as the case may be, the applicant).

Request as to payment of renewal fee

48. A request for information about the date of payment of any renewal fee shall be accompanied by the prescribed fee, if any, but a copy of an entry in or extract from the register shall be requested only in accordance with rule 52.

Inspection of register

49.-(1) The register or entries or reproductions of entries In it shall be made available for inspection by the public between the hours of 9 am and 5 pm on weekdays, other than Saturdays and days which are specified as excluded days for the purposes of section 120.

(2) A request to be allowed to inspect the register shall be accompanied by the prescribed fee, if any, but a copy of an entry in or extract from the register shall be requested only in accordance with rule 52.

Advertisements in relation to register

50. The comptroller may arrange for the publication and advertisement of such things done under the Act or these Rules in relation to the register as he may think fit.

Entries relating to sections 8(1), 12(1) and 37(1)

51. On the reference to the comptroller of a question under section 8( 1), 12(1) or 37(1), he shall, subject to rule 44( 1), cause an entry to be made in the register of the fact and of such other information relating to the reference as he may think fit.

Certificates and copies supplied by comptroller

52.-(1) Upon request made on Patents Form 23/77 and payment of the appropriate fee, but subject to paragraph (3) below, the comptroller shall supply-

(a) a certified copy or certified extract falling within section 32(11);
(b) a copy of an entry in or an extract from the register or a copy of or an extract from anything referred to in section 32(11)(b), certified by the impression of a rubber stamp;
(c) a certificate for the purposes of section 32( 10).

(2) Upon request made on Patents Form 23/77 and payment of the prescribed fee, if any, but subject to paragraph (3) below, the comptroller shall supply an uncertified copy of an entry in or an uncertified extract from the register or an uncertified copy of or an uncertified extract from anything referred to in section 32(11)(b).

(3) The restrictions on making documents available for inspection contained in rule 93(4) shall apply equally to the supply by the comptroller under this rule of copies of or extracts from such documents or requests as are referred to in rule 93( 4); and nothing in this rule shall be construed as imposing upon the comptroller the duty of supplying copies of or extracts from any document or file of a description referred to in rule 93( 5).

Order or direction by court

53. Where any order or direction has been made or given by the court-

(a) transferring a patent or application or any right in or under it to any person;
(b) that an application should proceed in the name of any person;
(c) allowing the proprietor of a patent to amend the specification; or
(d) revoking a patent;

the person in whose favour the order is made or the direction is given-

(i) shall send to the comptroller written notice thereof accompanied by an office copy of the order or direction; and
(ii) if the comptroller so requires and before a time fixed by him, shall file a specification as amended (prepared in accordance with rules 16,18 and 20),

and thereupon the specification shall be amended or the register rectified or altered, as the case may require.

ENTITLEMENT TO PATENT

Reference of question to the comptroller under section 37(1)

54.-(1) A reference under section 37(1) 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 nature of the question, the facts upon which the person making the reference relies and the order which he is seeking.

(2) The comptroller shall send a copy of the reference and statement to every person who is not a party to the reference being-

(a) a person who is shown on the register as having any right in or under the patent; or
(b) a person who is alleged in the reference to be entitled to a right in or under the patent.

other than the person making the reference under section 37(1) or any person who has consented in writing to the reference.

(3) If any person who is sent a copy of the reference and statement under paragraph (2) above wishes to oppose the making of the order sought ("the opponent"), he shall, within the period of six weeks beginning on the date when such copies are sent to him, file in duplicate a counterstatement setting out fully the grounds of his opposition and the comptroller shall send a copy of the counter-statement to the person making the reference and to those recipients of the copy of the reference and statement who are not party to the counter-statement.

(4) The person making the reference or any such recipient may, within the period of six weeks 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,-

(a) in any case, to the opponent; and
(b) in the case of evidence filed by such a recipient, to the person making the reference.

(5) Within the period of six weeks after the copy of such evidence is sent to him or, if no such evidence is filed, within six weeks 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 six weeks 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)

55.-(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

56. 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.

Orders under section 37

57.-(1) Where an order is made under section 37 -

(a) that a patent shall be transferred to one or more persons none of whom was an old proprietor; or
(b) that a person other than an old proprietor may make a new application for a patent,

the comptroller shall give notice of the making of the order to the old proprietor or proprietors, and to any of their licensees of whom he is aware; and a person who makes a request under section 38(3) must do so before the end of the relevant period.

(2) The relevant period is -

(a) where the request is made by an old proprietor, the period of two months starting on the date the notice is sent to him;
(b) where the request is made by a licensee, the period of four months starting on the date the notice is sent to him.

Reference to comptroller under section 38(5)

58.-(1) A reference under section 38(5) shall be made on Patents Form 2/77 and shall be accompanied by a copy and by a statement in duplicate setting out fully -

(a) the question referred;
(b) the facts upon which the person making the reference relies; and
(c) the period or terms of the licence which he is prepared to accept or grant.

(2) The comptroller shall send, except to the person who made the reference, a copy of the reference and statement to -

(a) the new proprietor or proprietors or, as the case may be, the new applicant; and
(b) every person claiming to be entitled to be granted a licence,

and any such person who receives a copy of the reference and statement may, before the end of the period of six weeks starting on the date the copies were sent to him, file a counter-statement (which must be in duplicate) setting out fully his grounds of objection.

(3) The comptroller shall send a copy of the counter-statement to the person who made the reference.

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

EMPLOYEES' INVENTIONS

Application under section 40 for compensation

59.-(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,-

(a) if restoration is ordered, continue as if the patent had remained continuously in effect; or
(b) 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 six weeks 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 six weeks 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 six weeks 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 six weeks 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 six weeks 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

60.-