The Patents (Amendment) Rules 2011

This Statutory Instrument has been printed to correct errors in SI 2007/3291 and is being issued free of charge to all known recipients of that Statutory Instrument.

Statutory Instruments

2011 No. 2052

Patents

The Patents (Amendment) Rules 2011

Made

19th August 2011

Laid before Parliament

22nd August 2011

Coming into force

1st October 2011

The Secretary of State makes the following Rules in exercise of the powers conferred by section 123 of the Patents Act 1977(1).

In accordance with paragraph 24 of Schedule 7 to the Tribunals, Courts and Enforcement Act 2007(2), the Secretary of State has consulted the Administrative Justice and Tribunals Council before making these Rules.

Citation and commencement

1.  These Rules may be cited as the Patents (Amendment) Rules 2011 and come into force on 1st October 2011.

Amendments to the Patents Rules 2007

2.  The Patents Rules 2007(3) are amended as follows.

3.  In the rules set out in the Schedule to these Rules, for “beginning with” substitute “beginning immediately after”.

Transitional Provisions

4.  Where, immediately before these Rules come into force, any period of time prescribed by any of the rules set out in the Schedule to these Rules has effect in relation to any act or proceeding and has not expired, those rules as amended by these Rules shall apply in determining the expiry of that period.

Judith Wilcox

Parliamentary Secretary for Business, Innovation and Skills

Department for Business, Innovation and Skills

19th August 2011

Rule 3

SCHEDULE Patents Rules 2007

• Rule 5(2) (International Exhibitions)

• Rule 8(5) (Filing of priority documents to support a declaration under section 5(2))

• Rule 10(3) (Mention of the inventor)

• Rule 12(3) (Applications for the grant of patents under sections 14 and 15)

• Rule 12(9) (Applications for the grant of patents under sections 14 and 15)

• Rule 18(2) (Missing Parts)

• Rule 18(7)(a) (Missing Parts)

• Rule 18(7)(b) (Missing Parts)

• Rule 19(3)(a) (New applications filed as mentioned in section 15(9))

• Rule 20(3)(a) (New applications under sections 8(3), 12(6) and 37(4))

• Rule 20(3)(b) (New applications under sections 8(3), 12(6) and 37(4))

• Rule 21(1)(a)(i) (Extensions for new applications)

• Rule 21(1)(b)(i) (Extensions for new applications)

• Rule 22(3) (Periods prescribed for the purposes of sections 15(10) and 17(1))

• Rule 22(5)(a)(i) (Periods prescribed for the purposes of sections 15(10) and 17(1))

• Rule 22(5)(b)(i) (Periods prescribed for the purposes of sections 15(10) and 17(1))

• Rule 22(5)(b)(ii) (Periods prescribed for the purposes of sections 15(10) and 17(1))

• Rule 22(7)(a) (Periods prescribed for the purposes of sections 15(10) and 17(1))

• Rule 22(7)(b)(i) (Periods prescribed for the purposes of sections 15(10) and 17(1))

• Rule 22(7)(b)(ii) (Periods prescribed for the purposes of sections 15(10) and 17(1))

• Rule 24(2) (Correcting a declaration made for the purposes of section 5(2))

• Rule 26(1) (Publication of application)

• Rule 28(2) (Request for substantive examination under section 18)

• Rule 28(5)(a) (Request for substantive examination under section 18)

• Rule 28(7) (Request for substantive examination under section 18)

• Rule 30(2)(a) (Period for putting application in order)

• Rule 30(2)(b) (Period for putting application in order)

• Rule 30(3)(a)(ii) (Period for putting application in order)

• Rule 30(4) (Period for putting application in order)

• Rule 31(4)(a) (Amendment of application before grant)

• Rule 32(2)(a) (Reinstatement of applications under section 20A)

• Rule 32(2)(b) (Reinstatement of applications under section 20A)

• Rule 32(8) (Reinstatement of applications under section 20A)

• Rule 37(3)(a) (Renewal of patents: first renewal)

• Rule 37(4)(a)(i) (Renewal of patents: first renewal)

• Rule 40(7) (Restoration of lapsed patents under section 28)

• Rule 43(4) (Application for, and cancellation of, an entry that licences are available as of right)

• Rule 51(2)(b) (Restrictions on inspection of documents)

• Rule 52(4) (Request for information where section 118(4) applies)

• Rule 53(3)(a) (Confidential documents)

• Rule 57(6) (Corrected translations)

• Rule 58(3) (Procedure for making a conversion request under section 81(2)(b)(i))

• Rule 58(4) (Procedure for making a conversion request under section 81(2)(b)(i))

• Rule 59(1) (Procedure for making a conversion request under section 81(2)(b)(ii))

• Rule 59(3) (Procedure for making a conversion request under section 81(2)(b)(ii))

• Rule 60 (Request for substantive examination following a direction under section 81)

• Rule 66(1) (Beginning of national phase)

• Rule 66(2) (Beginning of national phase)

• Rule 66(3) (Beginning of national phase)

• Rule 67(2) (International exhibitions)

• Rule 68(2)(b) (Altered prescribed periods)

• Rule 68(3)(b) (Altered prescribed periods)

• Rule 68(4)(a) (Altered prescribed periods)

• Rule 68(4)(b) (Altered prescribed periods)

• Rule 71(4) (Directions under section 89(3) and (5))

• Rule 76(2)(a) (Starting proceedings)

• Rule 76(2)(b) (Starting proceedings)

• Rule 77(8) (Notification of the parties)

• Rule 90(1) (Licences following entitlement proceedings)

• Rule 90(2) (Licences following entitlement proceedings)

• Rule 91(2)(b)(ii) (Period prescribed for applications by employee for compensation)

• Rule 96(7) (Submission of observations and observations in reply)

• Rule 98(1) (Review of opinion)

• Rule 99(4)(a) (Procedure on review)

• Rule 99(4)(b) (Procedure on review)

• Rule 104(2) (Failure to furnish an address for service)

• Rule 108(2)(c) (Extension of time limits)

• Rule 113(6) (Translations)

• Rule 116(2)(b) (Supplementary protection certificates)

• Schedule 1, paragraph 3(3)(a)(i) (The first and second requirements)

• Schedule 1, paragraph 3(3)(a)(ii) (The first and second requirements)

• Schedule 1, paragraph 3(3)(c) (The first and second requirements)

• Schedule 1, paragraph 6(5)(b) (Restriction of availability of biological material to experts)

• Schedule 1, paragraph 7(4) (Request for a sample to be made available to expert)

• Schedule 5, paragraph 7(6) (Patent applications filed before 7th January 1991)

EXPLANATORY NOTE

(This note is not part of the Rules)

These Rules amend the Patents Rules 2007 (SI 2007/3291) (as amended).

These Rules amend the various time periods prescribed in the rules set out in the Schedule to these Rules by substituting a reference to “beginning immediately after” for the references to “beginning with” so that when computing a period of time by reference to a relevant event, the date on which the relevant event occurred is not included.

A full regulatory impact assessment has not been produced for this instrument as no impact on the private or voluntary sectors is foreseen. An Explanatory Memorandum is available alongside the instrument on www.legislation.gov.uk

(1)

1977 c.37. Section 123 was amended by the Copyright, Designs and Patents Act 1988 (c.48), Schedule 5, paragraph 29; there are other amendments but none are relevant to these Rules.

(2)

2007 c.15.

(3)

S.I. 2007/3291, to which there are amendments not relevant to these Rules.