The Patents Rules 2007

PART 1INTRODUCTORY

1Citation and commencement

2General interpretation

3The declared priority date

4Forms and documents

PART 2APPLICATIONS FOR PATENTS

International exhibitions

5International exhibitions

Declarations of priority

6Declaration of priority for the purposes of section 5(2) (priority date)

7Request to the comptroller for permission to make a late declaration under section 5(2B)

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

9Translation of priority documents

Mention of the inventor

10Mention of the inventor

11Waiving the right to be mentioned

Form and content of applications

12Applications for the grant of patents under sections 14 and 15

13Biological material and sequence listings

14Size and presentation of application

16Single inventive concept

17References under section 15(1)(c)(ii)

18Missing parts

New applications

19New applications filed as mentioned in section 15(9)

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

21Extensions for new applications

Periods for filing contents of application

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

Preliminary examination

23Preliminary examination under section 15A

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

25Formal requirements

Publication of application

26Publication of application

Search and substantive examination

27Search under section 17

28Request for substantive examination under section 18

29Substantive examination reports

30Period for putting application in order

31Amendment of application before grant

32Reinstatement of applications under section 20A

33Observations by third parties on patentability

PART 3GRANTED PATENTS

Certificate and amendment

34Certificate of grant

35Amendment of specification after grant

36Renewal of patents: general

37Renewal of patents: first renewal

38Renewal of patents: subsequent renewals

39Renewal notice

40Restoration of lapsed patents under section 28

41Notification of lapsed patent

Surrender and cancelling entry that licences available as of right

43Application for, and cancellation of, an entry that licences are available as of right

PART 4THE REGISTER AND OTHER INFORMATION

44Entries in the register

45Advertisement in relation to register

46Copies of entries in, or extracts from, the register and certified facts

47Registrations of transactions, instruments and events

Copies of documents and corrections in relation to the register

48Copies of documents

49Correction of name, address and address for service

50Request for correction of error

Requests for information or documents

51Restrictions on inspection of documents

52Request for information where section 118(4) applies

53Confidential documents

54Requests for certain information

55Bibliographic information about an unpublished application

PART 5EUROPEAN PATENTS (UK)

56Translations of European patents (UK)

57Corrected translations

Conversion requests

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

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

60Request for substantive examination following a direction under section 81

Obligations to other contracting parties to the European Patent Convention

61Recognition of patent decision of competent authorities of other states

62Procedure for obtaining evidence for proceedings under the European Patent Convention

63Communication of information to the European Patent Office

PART 6INTERNATIONAL APPLICATIONS

64Interpretation relating to international applications

Filing at the Patent Office

65Filing of international applications at the Patent Office

Beginning the national phase, international exhibitions and altered prescribed periods

66Beginning of national phase

67International exhibitions

68Altered prescribed periods

69Necessary translations under section 89A(3) and (5)

70Requirements of necessary translations

Application deemed withdrawn or filing date refused under the Patent Co-operation Treaty

71Directions under section 89(3) and (5)

72Circumstance prescribed for the purposes of section 89(3)

PART 7PROCEEDINGS HEARD BEFORE THE COMPTROLLER

73Scope and interpretation

74Overriding objective

75Publication of notices

Conduct of hearings

76Starting proceedings

77Notification of the parties

78The counter-statement

79Copies of documents

80Evidence rounds and the hearing

81Alteration of time limits

82General powers of the comptroller in relation to proceedings before him

83Striking out a statement of case and summary judgment

84Hearings in public

85Security for costs or expenses

86Powers of comptroller to compel attendance of witnesses and production of documents

87Evidence in proceedings before the comptroller

88Proceedings in Scotland

89Proceedings started under section 46(3) by a person other than the proprietor

90Licences following entitlement proceedings

91Period prescribed for applications by employee for compensation

92Interpretation

Request for opinion

93Request for an opinion under section 74A

94Refusal or withdrawal of request

95Notification and advertisement of request

96Submission of observations and observations in reply

97Issue of the opinion

Review of opinion

98Review of opinion

99Procedure on review

100Outcome of review

PART 9MISCELLANEOUS

Agents and advisers

102Appointing advisers

Address for service

103Address for service

104Failure to furnish an address for service

Corrections and remission of fees

105Correction of errors

106Remission of fees

107Correction of irregularities

Time limits and delays

108Extension of time limits

109Extension of time limits specified by comptroller

110Interrupted days

111Delays in communication services

Copies available to the comptroller

112Copies available to the comptroller

113Translations

114Translations in proceedings in relation to a European patent (UK)

115Establishing the accuracy of translations

Supplementary Protection Certificates

116Supplementary protection certificates

118Reports of cases

119Publication and sale of documents

Transitional provisions and revocations

120Transitional provisions and revocations

SCHEDULE 1BIOLOGICAL MATERIAL

2Specification of an application for a patent, or of a patent, for an invention which involves the use of or concerns biological material

3The first and second requirements

4A request by a person for biological material to be made available

5The undertaking

6Restriction of availability of biological material to experts

7Request for a sample to be made available to expert

SCHEDULE 2FORMAL AND OTHER REQUIREMENTS

PART 1REQUIREMENTS: ALL DOCUMENTS

1A4 matt white paper must be used.

2A document in paper form must be free from tears,...

3Frames (lines surrounding matter) must not be used.

PART 2REQUIREMENTS: DOCUMENTS (OTHER THAN DRAWINGS)

4The pages of the description and claims must be numbered...

5But where a sequence listing is set out at the...

6Page numbers must be located at the top or bottom...

7The minimum margins in any document must be 20mm.

8Each of the following— (a) the request for the grant...

9The abstract, description and claims must use at least 1.5...

10The capital letters in any typeface or font used must...

PART 3REQUIREMENTS: DRAWINGS

11There must be a margin around any drawing which must...

12All drawings must be numbered consecutively in a single series....

13The drawings must begin on a new sheet of paper....

14The pages containing the drawings must be numbered consecutively in...

15Drawings must comprise black lines and must not be shaded....

16Drawings may include cross-hatching to illustrate the cross-sections of a...

17Any scale or other reference for making measurement must be...

18Any drawing must be produced in such manner that it...

19A drawing must not be included in the description, the...

20The capital letters in any typeface or font used in...

PART 4OTHER REQUIREMENTS

21References must only be included in the drawing where they...

22Tables of information may only be included in the claims...

23The terminology and any references used must be consistent throughout...

24Where units of measurement used in the application are not...

25Only technical terms, signs and symbols which are generally accepted...

SCHEDULE 3PROCEEDINGS HEARD BEFORE THE COMPTROLLER

PART 1APPLICATIONS, REFERENCES AND REQUESTS

PART 2OPPOSITIONS WHICH START PROCEEDINGS

PART 3OPPOSITIONS AFTER PROCEEDINGS HAVE STARTED

PART 4RULES WHICH APPLY TO ANY PROCEEDINGS HEARD BEFORE THE COMPTROLLER

PART 5RULES WHICH APPLY TO A REVIEW OF AN OPINION

SCHEDULE 4EXTENSION OF TIME LIMITS

PART 1PERIODS OF TIME THAT CANNOT BE EXTENDED

PART 2PERIODS OF TIME THAT MAY BE EXTENDED UNDER RULE 108(2) OR 108(3)

PART 3PERIODS OF TIME TO WHICH RULE 108(5) AND 108(7) RELATE

SCHEDULE 5TRANSITIONAL PROVISIONS

1Interpretation

2Periods of time

3Proceedings before the comptroller

4Service by post

5Applications to which certain amendments made to the Act by the Regulatory Reform (Patents) Order 2004 do not apply.

6Security for costs

7Patent applications filed before 7th January 1991

8Patent applications filed between 7th January 1991 and 27th July 2000

9Continued application of Patents Rules 1968 to existing patents

10Application of these Rules to existing patents and applications

11Application of the 1995 Rules to sections 8 and 12

SCHEDULE 6REVOCATIONS

2007 No. 3291

PATENTS

The Patents Rules 2007

Made19th November 2007

Laid before Parliament22nd November 2007

Coming into force17th 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 19771.

In accordance with section 8 of the Tribunals and Inquiries Act 19922, the Secretary of State has consulted the Administrative Justice and Tribunals Council.