The Patents Rules 1990

• Citation: S.I. 1990/2384
• Sections: 134

Section 1 Citation and commencement

These Rules may be cited as the Patents Rules 1990 and shall come into force on 7th January 1991.

Section 2 Interpretation

In these Rules—

“ the Act ” means the Patents Act 1977;

“the 1949 Act ” means the Patents Act 1949 ;

“declared priority date” means—

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the priority date claimed in the declaration has not been lost or abandoned and where the declaration has not been withdrawn before preparations for the publication of the application in suit have been completed by the Patent Office in accordance with section 16;

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;

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 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the priority date claimed in the declaration has not been lost or abandoned and where the declaration has not been withdrawn before the comptroller directs that the application for a European patent (UK) shall be so treated; or

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;

“Journal” means the Official Journal (Patents) published in accordance with rule 115.

Section 3 Construction

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) references to a form are references to that form as set out in Schedule 1;

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

Section 4 Forms

(1) The forms of which the use is required by these Rules (except the forms mentioned in rule 123(1)) are those set out in Schedule 1.

(2) A requirement under these Rules to use such a form is satisfied by the use either of a replica of that form or of a form which is acceptable to the comptroller and contains the information required by the form set out in that Schedule.

Section 5 International exhibitions

(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).

Section 6 Declaration of priority for the purposes of section 5

(1) A declaration for the purposes of section 5 shall be made at the time of filing the application for a patent (“the application in suit”) and shall state the date of filing of any application specified in the declaration and the country in or for which it was made.

(2) Subject to the provisions of rule 26 and paragraphs (3), (4) and (5) below, where the application in suit is for a patent under the Act, the applicant shall, within the period of sixteen months after the declared priority date, furnish to the Patent Office in respect of every application specified in the declaration—

(a) its file number; and

(b) except where paragraph (3) below has effect, a copy of that application duly certified by the authority with which it was filed or otherwise verified to the satisfaction of the comptroller.

(3) Where an application specified in the declaration is an application for a patent under the Act or an international application for a patent which is filed at the Patent Office,—

(a) if the application is filed under section 15(4), the applicant shall, at the time of filing the application, file—

(i) a request that a copy of the application specified in the declaration be prepared for use in the Patent Office; and

(ii) Patents Form 24/77 requesting the comptroller to certify the same; or

(b) if the application is filed otherwise than under section 15(4), the applicant shall file that request and that form in compliance with any request made by the comptroller.

(4) Where the application in suit is an application for a European patent (UK) which, by virtue of section 81, is to be treated as an application for a patent under the Act, the requirements of paragraphs (1) and (2) above shall be treated as having been complied with to the extent that the requirements of rule 38(1) to (3) of the Implementing Regulations to the European Patent Convention have been fulfilled.

(5) Where the application in suit is an international application for a patent (UK) which is to be treated as an application for a patent under the Act, the requirements of paragraphs (1) and (2) above shall be treated as having been complied with to the extent that the requirements of rules 4.10(a) and (c) and 17.1(a) or (b) of the Regulations made under the Patent Co-operation Treaty have been fulfilled.

(6) Where a copy of an application is filed or treated as having been filed under paragraph (2)(b), (3), (4) or (5) above and that application is in a language other than English, subject to rule 85(3)(c) and (d), a translation thereof into English verified to the satisfaction of the comptroller as corresponding to the original text shall be filed within the period of twenty-one months after the declared priority date.

(7) In the case of an international application for a patent (UK), the application of paragraph (6) above shall be subject to the provisions of rule 85(3)(c) and (d).

Section 7 References under section 8(1)(a) or 12(1)(a)

(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.

(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 two months 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 counter-statement.

(4) The person making the reference or any such recipient may, within the period of two months 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 two months beginning on the date when the copy of such evidence is sent to him or, if no such evidence is filed, within two months 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 two months 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.

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

(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 he 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.

(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 two months 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 two months 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 two months beginning on the date when the copy is sent to him or, if no such evidence is filed, within two months 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 two months 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.

Section 9 Orders under section 8 or 12

(1) Where an order is made under section 8 or section 12 that an application for a patent shall proceed in the name of one or more persons none of whom was an original applicant, the comptroller shall notify all original applicants and their licensees of whom he is aware of the making of the order.

(2) A person notified under paragraph (1) above may make a request under section 11(3) or under that section as applied by section 12(5),—

(a) in the case of a request by the original applicant or any of the original applicants, within the period of two months beginning on the date when the notification is sent to him; or

(b) in the case of a request by a licensee, within the period of four months beginning on the date when the notification is sent to him.

Section 10 Prescribed period for new applications under section 8(3) or 12(6)

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.

Section 11 Authorisation under section 8(5)

(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 3/77 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.

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

(1) A request under section 10 or section 12(4) by a joint applicant shall be made on Patents Form 4/77 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 two months 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.

Section 13 Referral to the comptroller under section 11(5)

(1) Where, following the making of such an order as is mentioned in section 11(2), a question is referred to the comptroller under subsection (5) of section 11 or that subsection as applied by section 12(5) as to whether any person is entitled to be granted a licence or whether the period or terms of a licence are reasonable, the reference shall be made on Patents Form 5/77 and shall be accompanied by a copy thereof and a statement in duplicate setting out fully the facts upon which the person making the reference relies and the terms of the licence which he is prepared to accept or grant.

(2) The comptroller shall send a copy of the reference and statement to every person in whose name the application is to proceed or, as the case may be, every person claiming to be entitled to be granted a licence, in either case not being the person who makes the reference, and if any recipient does not agree to grant or accept a licence for such period and upon such terms, he shall, within the period of two months 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 the person making the reference.

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

Section 14 Mention of inventor under section 13

(1) An application to the comptroller under section 13(1) or (3) by any person who alleges—

(a) that he 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 the invention ought not to have been so mentioned,

shall be made on Patents Form 6/77 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 (other than the applicant under section 13 himself);

(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.

(3) Any recipient of such a copy of an application and statement who wishes to oppose the application shall, within the period of two months 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 slip.

Section 15 Procedure where applicant is not the inventor or sole inventor

(1) Subject to the provisions of rules 26, 81(3), 82(3) and 85(7)(a), if the applicant or applicants are not the inventor or inventors, a statement under section 13(2) identifying the inventor or inventors and, where required by section 13(2)(b), the derivation of the right of the applicant or applicants to be granted the patent shall be made on Patents Form 7/77, within the period of sixteen months after the declared priority date or, where there is no declared priority date, the date of filing the application.

(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) Where the application is an application for a European patent (UK) which by virtue of section 81 is to be treated as an application for a patent under the Act, the requirements of paragraphs (1) and (2) above shall be treated as having been complied with to the extent that the requirements of rule 17 of the Implementing Regulations to the European Patent Convention have been fulfilled.

(4) Where the application is an international application for a patent (UK), the requirements of paragraphs (1) and (2) above shall be treated as having been complied with if the provisions of rules 4.1(a)(v) and 4.6 of the Regulations made under the Patent Co-operation Treaty have been complied with, whether or not there was any requirement that they be complied with.

Section 16 Applications for the grant of patents under sections 14 and 15

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

(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.

(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.

Section 17 Micro-organisms

Schedule 2 shall have effect in relation to certain applications for patents, and patents, for inventions which require for their performance the use of micro-organisms.

Section 18 Drawings

(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—

(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.

Section 19 The abstract

(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.

Section 20 Size and presentation of documents

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

(2) The specification, abstract and any replacement sheet thereof shall be filed in duplicate.

(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 cm × 721 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:

(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 (1) 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 (1) above shall be reasonably free from deletions and other alterations, overwritings and interlineations and shall, in any event, be legible.

Section 21 Form of statements, counter-statements and evidence

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).

Section 22 Claims in different categories

Without prejudice to the generality of section 14(5)(d), an application for a patent which includes,—

(a) in addition to an independent claim for a product, an independent claim for a process specially adapted for the manufacture of the product, and an independent claim for a use of the product;

(b) in addition to an independent claim for a process, an independent claim for an apparatus or means specifically designed for carrying out the process; or

(c) in addition to an independent claim for a product, an independent claim for a process specially adapted for the manufacture of the product, and an independent claim for an apparatus or means specifically designed for carrying out the process,

shall be treated as relating to a group of inventions which are so linked as to form a single inventive concept.

Section 23 Late filed drawings

The period prescribed for the purposes of section 15(2) and (3) shall be one month calculated from the date on which the comptroller sends out notification to the applicant that the drawing has been filed later than the date which is, by virtue of section 15(1), to be treated as the date of filing the application or, as the case may be, that it has not been filed.

Section 24 New applications under section 15(4)

(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(4) not later than the latest of—

(a) the beginning of the sixth 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”);

(b) where the earlier application is amended as provided by section 18(3) so as to comply with section 14(5)(d), the expiry of the period of two months beginning on the day that the amendment is filed; and

(c) where the first report of the examiner under section 18 is made under subsection (3), the expiry of the period specified for reply to that report:

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.

(3) Where possible, the description and drawings of the earlier application and the new application shall respectively relate only to the matter for which protection is sought by that application. However, when it is necessary for an application to describe the matter for which protection is sought by another application, it shall include a reference by number to that other application and shall indicate the matter for which protection is claimed in the other application.

Section 25 Periods prescribed under section 15(5)(a) and (b) and 17(1) for filing claims, abstract and request for preliminary examination and search

(1) The period prescribed for the purposes of section 15(5)(a) shall be,—

(a) if the application contains no declared priority date, the period of twelve months calculated from its date of filing; or

(b) if the application does contain a declared priority date, the last to expire of the period of twelve months calculated from the declared priority date and the period of one month calculated from the date of filing the application.

(2) Subject to the provisions of rules 81(3), 82(3) and 85(7)(a), the period prescribed for the purposes of sections 15(5)(b) and 17(1) shall be,—

(a) if the application contains no declared priority date, the period of twelve months calculated from its date of filing; or

(b) if the application does contain a declared priority date, the period of twelve months calculated from the declared priority date.

(3) Where a new application is filed under section 8(3), 12(6), 15(4) or 37(4) after the end of the period prescribed in paragraph (1) or (2) above, as the case may be, the period prescribed for the purposes of sections 15(5) and 17(1) shall be the period which expires on the actual date of filing of the new application.

Section 26 Extensions for new applications

(1) Where a new application is filed under section 8(3), 12(6), 15(4) or 37(4) after the period of sixteen months prescribed in either rule 6 or rule 15, then, subject to the following provisions of this rule,—

(a) the requirements of those rules shall be complied with at the time of filing the new application; and

(b) the requirements of paragraph 1(2)(a)(ii) and (3) of Schedule 2, in a case to which they apply, shall be complied with not later than the later of the time ascertained under the said paragraph 1(3) and the time of filing the new application.

(2) Where a new application is filed under any of those sections—

(a) within the period prescribed in paragraph (6) of rule 6 as modified, in the case of an international application, by rule 85(3), the requirement of that paragraph shall have effect as provided therein; or

(b) after that period, the requirements of that paragraph shall be complied with at the time of filing,

subject, in either case, to paragraph (3) below.

(3) Where a new application is filed under section 15(4) after—

(a) the period of sixteen months prescribed in rule 6(2) or rule 15(1); or

(b) the period prescribed in rule 6(6) as modified, in the case of an international application, by rule 85(3),

but within an extension of that period under rule 110(3) or (4) in respect of the earlier application, the requirements of rule 6(2) and (3), rule 6(6) or rule 15, as the case may be, shall be complied with before the end of the extended period.

Section 27 Period for publication of application

The period prescribed for the purposes of section 16 shall be the period of eighteen months calculated from the declared priority date or, where there is no declared priority date, the date of filing the application.

Section 28 Preliminary examination and search under section 17

(1) A request under section 17(1)(a) for a preliminary examination and search shall be made on Patents Form 9/77.

(2) On a preliminary examination the examiner shall determine, not only whether the application (“the application in suit”) complies with those requirements of the Act and these Rules which are designated by rule 31 as formal requirements for the purposes of the Act, but also whether the requirements of rules 6(1) and (2) and 15(1) and the provisions of section 15(3) have been complied with.

(3) 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(5).

Section 29 Procedure where earlier application made

Where the preliminary examination under rule 28 reveals that an earlier relevant application declared for the purposes of section 5 has been stated in the application in suit to have a date of filing more than twelve months before the date of filing of the application in suit, the Patent Office shall notify the applicant that the earlier relevant application will be disregarded unless, within one month, he supplies the Patent Office with a corrected date, being one which falls within those twelve months.

Section 30 Address for service

Every person concerned in any proceedings to which these Rules relate and every proprietor of a patent shall furnish to the comptroller an address for service in the United Kingdom; and that address may be treated for all purposes connected with such proceedings or patent (as appropriate) as the address of the person concerned in the proceedings or of the proprietor of the patent.

Section 31 Formal requirements

(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)) and 30 shall be formal requirements for the purposes of the Act.

(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.

Section 32 Searches under section 17(6) and (8)

(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, before the expiry of the period specified for the making of observations on the report made under section 18(3), request the Patent Office on Patents Form 9/77 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 9/77.

(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.

Section 33 Request for substantive examination under section 18

(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)(b) and paragraphs (3) and (4) 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(4) 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(4) 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.

Section 34 Period for putting application in order

(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 the following provisions of this paragraph, shall be 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; and

(b) in the case of an application 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.

(2) In a case where,—

(a) before or after these Rules come into force, 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

(b) following that report, and within the last three months of the period ascertained under paragraph (1) above (including any alteration thereof under rule 100 or rule 110 or an alteration thereof previously made under this paragraph) but after these Rules come into force, 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.

Section 35 Amendment of request for grant

Subject to rule 45(3), an application for amendment of the request for the grant of a patent shall be made on Patents Form 11/77 and shall be accompanied by a document clearly identifying the proposed amendment.

Section 36 Amendment of application before grant

(1) Unless the comptroller so requires, the applicant may not amend the description, claims and drawings contained in his application before the comptroller sends to the applicant the examiner’s report under section 17(5).

(2) An applicant may of his own volition amend his application in accordance with the following provisions of this rule but not otherwise.

(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 of his own volition amend the description, claims and drawings contained in his application.

(4) After the applicant has been sent the first report of the examiner under section 18, in addition to his right under section 18(3) to amend the application so as to comply with the requirements of the Act and these Rules, the applicant may of his own volition amend once the description, claims or drawings of the application: provided that, if the examiner’s first report is made under section 18(3), the amendment shall be filed at the same time as the applicant replies to that report or, if the examiner’s first report is made under section 18(4), the amendment shall be filed within two months of that report being sent to the applicant.

(5) Any further amendment to the description, claims or drawings which the applicant desires to make of his own volition may only be made with the consent of the comptroller following the filing of Patents Form 11/77 accompanied by a document clearly identifying the proposed amendment.

Section 37 Observations on patentability under section 21

(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.

Section 38 Certificates of grant

A certificate that a patent has been granted shall be in the form set out in Schedule 3.

Section 39 Renewal of patents

(1) If, except in the case of a European patent (UK), it is desired to keep a patent in force for a further year after the expiration of the fourth or any succeeding year from the date of filing an application for that patent as determined in accordance with section 15, Patents Form 12/77, in respect of the next succeeding year, accompanied by the prescribed renewal fee for that year, shall be filed in the three months ending with the fourth or, as the case may be, succeeding anniversary of the date of filing:

Provided that, where a patent is granted in the three months ending with the fourth or any succeeding anniversary as so determined or at any time thereafter, Patents Form 12/77, accompanied by the prescribed renewal fee, in respect of the fifth or succeeding year may be filed not more than three months before the expiration of the fourth or relevant succeeding year but before the expiration of three months from the date on which the patent is granted.

(2) If it is desired, at the expiration of the fourth or any succeeding year from the date of filing an application for a European patent (UK), as determined in accordance with Article 80 of the European Patent Convention, and provided that mention of the grant of the patent is, or has been, published in the European Patent Bulletin, to keep the patent in force, Patents Form 12/77, accompanied by the prescribed renewal fee, shall be filed in the three months ending with the fourth or, as the case may be, succeeding anniversary of the date of filing as so determined:

Provided that, where any renewal fee is due on, or within the period of three months after, the date of publication in the European Patent Bulletin of the mention of the grant of the patent, being a date on or after that on which these Rules come into force, that renewal fee may be paid within those three months; but, where the date of such publication is before that on which these Rules come into force, the proviso to rule 39(2) of the Patents Rules 1982 shall continue to apply.

(3) On receipt of the prescribed renewal fee accompanied by Patents Form 12/77 duly completed, the comptroller shall (if the patent has been granted) issue a certificate of payment on the appropriate portion of that form.

(4) Where the period for payment of a renewal fee pursuant to paragraph (1) or (2) above has expired, the comptroller shall, not later than six weeks after the last date for payment under that paragraph and if the fee still remains unpaid, send to the proprietor of the patent a notice reminding him that payment is overdue and of the consequences of non-payment.

(5) The comptroller shall send a notice under paragraph (4) above to—

(a) the address in the United Kingdom specified by the proprietor on payment of the last renewal fee; or

(b) where another address in the United Kingdom has been notified to him for that purpose by the proprietor since the last renewal, that address,

and, in any other case, the address for service entered in the register.

(6) A request for extending the period for payment of a renewal fee shall be made on Patents Form 12/77 and shall be accompanied by the prescribed renewal fee and the prescribed additional fee for late payment.

Section 40 Amendment of specification after grant

(1) An application to the comptroller for leave to amend the specification of a patent shall be made on Patents Form 14/77 and shall be advertised by publication of the Journal and in such other manner, if any, as the comptroller may direct.

(2) Any person wishing to oppose the application to amend shall, within two months from the date of the advertisement in the Journal, give notice 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 applicant.

(4) Within the period of two months 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) a copy of the specification as published on which the proposed amendment is clearly identified;

(b) 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 verified to the satisfaction of the comptroller as corresponding to the original text; and

(c) 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 verified to his satisfaction as corresponding to the original text.

(7) 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.

Section 41 Restoration of lapsed patents under section 28

(1) An application under section 28 for the restoration of a patent, including an application for restoration of a patent which lapsed not more than twelve months before these Rules came into force (being in any case a patent which has lapsed by reason of a failure to pay any renewal fee),—

(a) may be made at any time within the period of nineteen months beginning on the day on which it ceased to have effect; 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 17/77, 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:

Provided that, in a case where a notification under this paragraph is sent to the applicant before these Rules come into force, this paragraph shall have effect as if the words “within two months after the notification is sent to him” were omitted.

Section 42 Notification of lapsed patent

Where a patent has ceased to have effect because a renewal fee has not been paid within the period prescribed in rule 39(1) or (2) and the extended period specified in section 25(4) has expired without the renewal fee and prescribed additional fee having been paid, the comptroller shall, within six weeks after the expiration of the extended period, notify the proprietor of the patent of the fact and draw his attention to the provisions of section 28.

Section 43 Surrender of patents

(1) A notice of an offer by a proprietor of a patent under section 29 to surrender his patent shall be given on Patents Form 18/77 and shall be 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 19/77.

(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 two months 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 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.

Section 44 Entries in the register

(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) 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.

(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.

Section 45 Alteration of name or address

(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) Before acting on a request to alter a name, the comptroller may require such proof of the alteration as he thinks fit.

(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.

Section 46 Registrations under section 33

(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) Unless the comptroller otherwise directs, an application under paragraph (1) above shall be accompanied by—

(a) a certified copy of any document which establishes the transaction, instrument or event; or

(b) a certified copy of such extracts from such document as suffice to establish the transaction, instrument or event.

Section 47 Request for correction of error

(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 22/77; and the correction shall be clearly identified on a document annexed to the form or, if not, on the form itself.

(2) The comptroller may call for such written explanation of the reasons for the request or evidence in support of it as he may require in order to satisfy himself that there is an error and, upon being so satisfied, shall make such correction as may be agreed between the proprietor of the patent or applicant and the comptroller.

Section 48 Request as to payment of renewal fee

A request for information about the date of payment of any renewal fee shall be made on Patents Form 23/77 and shall be accompanied by the appropriate fee.

Section 49 Inspection of register

(1) The register or entries or reproductions of entries in it shall be made available for inspection by the public on payment of the prescribed fee between the hours of 10.00 am and 4.00 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 made on Patents Form 23/77 and shall be accompanied by the appropriate fee.

Section 50 Advertisements in relation to register

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.