Explanatory note
(This note is not part of the Rules)
These Rules amend the Patents Rules 1995 (SI 1995/2093, as amended) (“the 1995 Rules”) and the Patents (Fees) Rules 1998 (SI 1998/1778, as amended) (“the Fees Rules”). The amendments made enable the 1995 Rules to be administered in conformity with the Patent Law Treaty and the Regulations Under the Patent Law Treaty (both of which were adopted at Geneva on 1st June 2000). The amendments required to the Patents Act 1977 (c. 37) (“the Act”) to conform with that Treaty were made by the Regulatory Reform (Patents) Order 2004 (SI 2004/2357) (“the 2004 Order”).
These Rules prescribe time periods and other requirements for the purposes of sections 5, 13, 15, 17, 18, 20A, 81 and 117, 117B of the Act, and fix fees in connection with various matters under the Act.
Rule 3 substitutes new rules 6 to 6C for rule 6 in the 1995 Rules. The new rules 6 to 6C reflect changes made by the 2004 Order to section 5 of the Act. In particular, the new rule 6A enables a declaration of priority to be made more than twelve months after the priority date. The new rule 6C means in future an applicant will only have to provide a translation of a priority application when the comptroller directs him to do so.
Rule 4 amends rule 15 of the 1995 Rules. This amendment is consequential on other amendments made to the Rules.
Rule 5 amends rule 16 of the 1995 Rules. This amendment relates to the more liberal filing requirements of section 15 of the Act (as substituted by the 2004 Order). Where an applicant does not file his name and address or where a suitable translation of the description has not been filed the comptroller will notify the applicant accordingly.
Rule 6 inserts a new rule 22A into the 1995 Rules. The new rule is a consequence of the applicant now being permitted to file a reference to an earlier relevant application to obtain a date of filing.
Rule 7 substitutes a new rule 23 for rule 23 in the 1995 Rules. This new rule is a consequence of allowing an applicant to file missing parts (missing drawings and missing parts of descriptions) rather than just missing drawings.
Rule 8 substitutes new rules 25 and 26 for rules 25 and 26 in the 1995 Rules. The new rule 25 sets out the periods within which the applicant must carry out certain actions. New rule 26 sets out certain modifications to time periods where a new application is filed.
Rule 9 substitutes new rules 28, 28A and 29 for rules 28 and 29 in the 1995 Rules. The new rules 28 and 28A set out the procedure for the new preliminary examination under section 15A of the Act (inserted by the 2004 Order). Rule 29 sets out a new procedure for correcting erroneous declarations under section 5.
Rule 10 inserts a new rule 36A into the 1995 Rules. This rule prescribes the procedure for applying for reinstatement of an application under section 20A of the Act (inserted by the 2004 Order).
Rules 11 to 13 amend respectively rules 45, 46 and 47 of the 1995 Rules. These amendments limit the obligation on applicants to provide evidence to those situations where the comptroller has doubts about the relevant issue.
Rule 14 substitutes a new rule 110 for rule 110 in the 1995 Rules and inserts a new Schedule 4A (found in Schedule 1 to these Rules) into the 1995 Rules. This amendment is intended to clarify when a period of time can be altered and when the applicant has to apply for reinstatement of his application under section 20A of the Act (inserted by the 2004 Order).
Rule 15 inserts a new rule 110A into the 1995 Rules. This amendment sets out the limitations of when a request can be made under section 117B of the Act (inserted by the 2004 Order).
Rule 16 inserts a new rule 112A into the 1995 Rules. This rule creates an obligation on the comptroller to make copies of an application in certain circumstances.
Rule 17 inserts a new rule 113A into the 1995 Rules. This amendment sets out the circumstances when the comptroller can require an applicant to establish that a translation of a document is accurate.
Rule 20 provides a transitional provision.
Schedule 2 includes a number of amendments that are consequential upon the changes made by the 2004 Order and these Rules.
Schedule 3 amends the Fees Rules. The effect of those amendments is as follows—
A new Patents Form 3/77 has been introduced. An applicant will have to pay a fee of £40 when they uses this form to make a declaration for the purposes of section 5(2) of the Act after the date of filing, in relation to an earlier relevant application filed during the period allowed by section 5(2A) of the Act. Further, an applicant who asks permission to make a late declaration of priority under section 5(2B) of the Act will have to pay a fee of £150;
The fee for a further or supplementary search in respect of an application to which articles 20 to 22 of the 2004 Order applies will be reduced to £100. All other fees attached to Patents Form 9/77 remain unchanged. This Form will only be used in respect of an application to which those articles apply;
Any application in respect of which articles 20 to 22 of the 2004 Order do not apply (a new application) will have to pay the fees attached to new Patents Form 9A/77. The fees for that new Form are reduced to reflect the introduction of the application fee. Patents Form 9A/77 will only be used in respect of applications to which those articles do not apply;
A new Patents Form 14/77 has been introduced for the reinstatement of an application under section 20A of the Act (which was inserted by the 2004 Order). A fee of £150 will have to be paid to make such an application;
The filing fee (which was set at zero) has been abolished; there is now an application fee in its place. The application fee of £30 represents the proportion of the old search fee that covered preliminary examination.
A Regulatory Impact Assessment is available; this assessment relates to both these Rules and the 2004 Order. Copies of the assessment have been placed in the libraries of both Houses of Parliament and are also available from the Patents Directorate, The Patent Office, Concept House, Cardiff Road, Newport NP10 8QQ.