The Patents (Amendment) (No. 2) Rules 2014

• Citation: S.I. 2014/2401
• Sections: 10

Section 1 Citation and commencement

These Rules may be cited as the Patents (Amendment) (No. 2) Rules 2014 and come into force on 1st October 2014.

Section 2 Amendments to the Patents Rules 2007

The Patents Rules 2007 are amended as follows.

Section 3 New applications governed by rule 19

In rule 19(4)(a), after “report”, insert “under section 18 ”.

Section 4 Payment of fees under section 77(5A) of the Patents Act 1977 following restoration of a European patent (UK)

In rule 36(1), in the definition of “renewal period”, after “payment of a renewal fee”, insert “unless a renewal fee is payable by virtue of section 77(5A), in which case in this rule and in rules 39 and 41 “ renewal period ” means the period in which the fee is payable under section 77(5A) and rule 41A”.

Section 5 Payment of fees under section 77(5A) of the Patents Act 1977 following restoration of a European patent (UK)

In rule 36(2), for “effect at the end of the renewal date.”, substitute—

effect—

(a) where the renewal fee is payable by virtue of section 77(5A), at the end of the final day of the renewal period;

(b) in any other case, at the end of the renewal date.

Section 6 Payment of fees under section 77(5A) of the Patents Act 1977 following restoration of a European patent (UK)

For rule 39(2), substitute—

(2) If the renewal fee remains unpaid, the comptroller must send a renewal notice to the proprietor of the patent—

(a) where the renewal fee is payable by virtue of section 77(5A), before the end of the period of six weeks beginning immediately after the later of—

(i) the end of the renewal period, and

(ii) the date on which the comptroller receives notification of the restoration of the patent from the European Patent Office ;

(b) in any other case, before the end of the period of six weeks beginning immediately after the end of the renewal period.

Section 7 Payment of fees under section 77(5A) of the Patents Act 1977 following restoration of a European patent (UK)

After rule 41, insert—

Payment of fees under section 77(5A) following restoration of a European patent (UK)

(41A) The prescribed period for the purposes of section 77(5A) is two months.

Section 8 Payment of fees under section 77(5A) of the Patents Act 1977 following restoration of a European patent (UK)

In Schedule 4, Part 1, after the entry in respect of rule 40(1), insert the following entry—

rule 41A (payment of fees under section 77(5A) following restoration of a European patent (UK) )

Section 9 Opinions on prescribed matters

In rule 44(5)(a), omit “(a) or (b)”.

Section 10 Opinions on prescribed matters

After rule 93(5), insert—

(6) The prescribed matters for the purposes of section 74A(1) are as follows—

(a) whether a particular act constitutes, or (if done) would constitute, an infringement of the patent;

(b) whether, or to what extent, an invention for which the patent has been granted is not a patentable invention ;

(c) whether the specification of the patent discloses the invention clearly enough and completely enough for it to be performed by a person skilled in the art;

(d) whether the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent as filed or, if the patent was granted on a new application, in the earlier application as filed;

(e) whether the protection conferred by the patent has been extended by an amendment which should not have been allowed;

(f) whether a supplementary protection certificate is invalid under Article 15 of the Medicinal Products Regulation ; and

(g) whether a supplementary protection certificate is invalid under Article 15 of the Plant Protection Products Regulation .