19th November 2007
22nd November 2007
17th December 2007
The Secretary of State makes the following Rules in exercise of the powers conferred upon him by sections 14(6), 25(5), 32, 74B, 77(9), 92, 123, 125A and 130(2) of the Patents Act 1977(1).
In accordance with section 8 of the Tribunals and Inquiries Act 1992(2), the Secretary of State has consulted the Administrative Justice and Tribunals Council.
(1)
1977 c. 37; section 74B was inserted by the Patents Act 2004 (c.16); section 123 was amended by the Copyright, Designs and Patents Act 1988 (c. 48), Schedule 5, paragraph 29, and the Patents Act 2004 (c.16), Schedule 2, paragraph 26; section 125A was inserted by the Copyright, Designs and Patents Act 1988, Schedule 5, paragraph 30, and was amended by SI 2000/2037. Back [1]
(2)
1992 c. 53; the definition of “Council” has been amended by the Tribunals, Courts and Enforcement Act 2007 (c.15), Schedule 8, paragraph 30. Back [2]
These Rules may be cited as the Patents Rules 2007 and shall come into force on 17th December 2007.
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General interpretation
(1)
In these Rules—
“the Act” means the Patents Act 1977 and “section”, unless the contrary intention appears, means a section of the Act;
“application number” includes file number;
“compliance date” means the last day of the compliance period;
“compliance period” means the period prescribed by rule 30;
“declared priority date” has the meaning given to it by rule 3(1);
“initiation date” means the date on which a new application was initiated by documents, mentioned in section 15(1), being filed at the Patent Office;
“new application” means a new application filed under section 8(3), 12(6) or 37(4) or as mentioned in section 15(9);
“no declared priority date” has the meaning given to it by rule 3(2);
“Patents Form” has the meaning given to it by rule 4(1);
“priority application” means an earlier relevant application specified in a declaration for the purposes of section 5(2);
“sequence” and “sequence listing” have the same meaning as they have under the Patent Co-operation Treaty;
“start date” means, in relation to rules 106(6)(a) and 116 on supplementary protection certificates, the first day following the day on which the basic patent expires; and
“termination” has the meaning given by section 20B(7) and “terminated” shall be construed accordingly.
(2)
Where a period of time has been altered under rules 20(4), 71(7), 81 or 107 to 111, any reference in these Rules to the period of time shall be construed as a reference to the period as altered.
(3)
For the purposes of these Rules a document is available to the comptroller where—
(a)
it is in electronic storage (whether in the Patent Office or elsewhere) and he can access it by using electronic communications; or
(b)
it is kept at the Patent Office,
and he has been furnished with sufficient information to obtain a copy of the document.
(4)
But a document may be treated as unavailable to the comptroller where—
(a)
its accuracy cannot be verified to his satisfaction; or
(b)
he has to pay to access it.
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The declared priority date
(1)
For the purposes of these Rules the “declared priority date” is the date of filing of the earliest relevant application specified in a declaration made for the purposes of section 5(2) in, or in connection with, an application in suit.
(2)
For the purposes of these Rules there is “no declared priority date” if—
(a)
no declaration has been made for the purposes of section 5(2); or
(b)
every declaration made has been withdrawn or disregarded before the end of the relevant period.
(3)
For the purposes of paragraph (2)(b) the relevant period ends—
(a)
in the case of an application which falls to be treated as an application for a patent under the Act by virtue of a direction under section 81, when that direction is given;
(b)
in the case of an international application for a patent (UK), when the national phase of the application begins; or
(c)
in any other case, when preparations for the application’s publication have been completed by the Patent Office.
(4)
In this rule references to declarations made for the purposes of section 5(2) include declarations treated as made for those purposes.
The forms of which the use is required by these Rules are those set out in directions under section 123(2A) and are referred to in these Rules as Patents Forms.
(2)
Such a requirement to use a form is satisfied by the use of a form which is acceptable to the comptroller and contains the information required by the form as so set out.
(3)
Such directions must be published in accordance with rule 117(c).
(4)
Unless the comptroller otherwise directs, to file any form or other document under the Act or these Rules only one side of each sheet of paper must be used and the other side must remain blank.
(5)
But where the information is delivered in electronic form or using electronic communications—
(a)
a requirement under these Rules to use a form; and
(b)
the requirements in paragraph (4),do not apply.
(6)
Where any form or other document is delivered to the comptroller in electronic form or using electronic communications, any requirement in these Rules for multiple copies of that form or document to be filed does not apply.
The statement mentioned in section 2(4)(c) that an invention has been displayed at an international exhibition must be in writing.
(2)
The prescribed period for the purposes of section 2(4)(c) is four months beginning with the date of filing.
(3)
But paragraphs (1) and (2) do not apply where rule 67(2) applies.
(4)
The written evidence required by section 2(4)(c) must be in the form of—
(a)
a certificate issued by the authority responsible for the international exhibition; and
(b)
a statement, duly authenticated by that authority, identifying the invention as being the invention displayed at the exhibition.
(5)
The certificate must include the opening date of the exhibition (or if later, the date on which the invention was first displayed).
(6)
The comptroller may publish a statement in the journal that a particular exhibition falls within the definition of “international exhibition” in section 130(1) (interpretation).
Declarations of priority
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Declaration of priority for the purposes of section 5(2) (priority date)
(1)
Subject to paragraph (2) and rule 7(9), a declaration for the purposes of section 5(2) must be made at the time of filing the application for a patent.
(2)
Subject to rule 7(9), 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;
(b)
it is made before the end of the period of sixteen months beginning 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, or any earlier, 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) for publication of the application during the period prescribed for the purposes of that section; or
(b)
any request made was withdrawn before preparations for the application’s publication have been completed by the Patent Office.
(4)
A declaration for the purposes of section 5(2) must specify—
(a)
the date of filing of each earlier relevant application; and
(b)
the country it was filed in or in respect of.
(5)
In the case of a new application filed as mentioned in section 15(9), no declaration shall be made which has not also been made in, or in connection with, the earlier application.
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Request to the comptroller for permission to make a late declaration under section 5(2B)
(1)
The period prescribed for the purposes of section 5(2A)(b) is two months.
(2)
Subject to paragraph (4), a request under section 5(2B) must be—
(a)
made on Patents Form 3; 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).
(3)
Where that evidence does not accompany the request, the comptroller must specify a period within which the evidence must be filed.
(4)
In relation to a new application, a request under section 5(2B) may be made in writing, instead of on Patents Form 3, and no evidence shall accompany it.
(5)
Subject to paragraph (6) and rule 66(3), a request under section 5(2B) may only be made before the end of the period allowed under section 5(2A)(b).
(6)
Where a new application is filed after the end of the period allowed under section 5(2A)(b), a request under section 5(2B) may be made on the initiation date.
(7)
A request under section 5(2B) may only be made where—
(a)
the condition in paragraph (8) is met; or
(b)
the request is made in relation to an international application for a patent (UK).
(8)
The condition is that—
(a)
the applicant has not made a request under section 16(1) for publication of the application during the period prescribed for the purposes of that section; or
(b)
any request made was withdrawn before preparations for the application’s publication have been completed by the Patent Office.
(9)
Where an applicant makes a request under section 5(2B), he must make the declaration for the purposes of section 5(2) at the same time as making that request.
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Filing of priority documents to support a declaration under section 5(2)
(1)
In respect of each priority application to which this paragraph applies the applicant must, before the end of the relevant period, furnish to the comptroller the application number of that application; otherwise the comptroller must disregard the declaration made for the purposes of section 5(2), in so far as it relates to the priority application.
(2)
In respect of each priority application to which this paragraph applies the applicant must, before the end of the relevant period, furnish to the comptroller a copy of that application—
(a)
duly certified by the authority with which it was filed; or
(b)
otherwise verified to the satisfaction of the comptroller,
otherwise the comptroller must disregard the declaration made for the purposes of section 5(2), in so far as it relates to the priority application.
(3)
Paragraph (1) applies to every priority application except where the application in suit is an international application for a patent (UK) and the application number of the priority application was indicated in compliance with the Patent Co-operation Treaty.
(4)
Paragraph (2) applies to every priority application except where—
(a)
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 the Patent Co-operation Treaty; or
(b)
the priority application or a copy of the priority application is available to the comptroller.
(5)
For the purposes of this rule the relevant period is sixteen months beginning with the declared priority date, subject to rule 21.
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Translation of priority documents
(1)
The comptroller may direct the applicant to comply with the requirements of paragraph (4), if—
(a)
a copy of the priority application has been—
(i)
furnished in accordance with rule 8(2),
(ii)
filed in compliance with the European Patent Convention,
(iii)
filed in compliance with the Patent Co-operation Treaty, or
(iv)
made by the comptroller in accordance with rule 112(2);
(b)
that copy is in a language other than English or Welsh; 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, is new or 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)
But the comptroller shall not specify a period that ends after the grant of the patent.
(4)
Where the comptroller has given a direction under paragraph (1), the applicant must, 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 comptroller must disregard the declaration made for the purposes of section 5(2), in so far as it relates to the priority application.
An inventor or joint inventor of an invention, if not mentioned in any published application for a patent, or in any patent granted, for the invention, must be mentioned in an addendum or an erratum to the application or patent.
(2)
A person who alleges that any person ought to have been mentioned as the inventor or joint inventor of an invention may apply to the comptroller for that person to be so mentioned—
(a)
in any patent granted for the invention; and
(b)
if possible in any published application for a patent for the invention,
and, if not so mentioned, in the manner prescribed by paragraph (1).
(3)
Subject to rules 21, 58(4), 59(3) and 68(2), the period prescribed for the purposes of section 13(2) is sixteen months beginning with—
(a)
where there is no declared priority date, the date of filing of the application; or
(b)
where there is a declared priority date, that date.
(4)
A statement filed under section 13(2) must be made on Patents Form 7.
