The Patents Rules 2007

PART 4 THE REGISTER AND OTHER INFORMATION

The register

Entries in the register

44.—(1) When an application for a patent is published, the comptroller must enter each of the following matters in the register—

(a) the name of the applicant;

(b) the name and address of the person identified as the inventor;

(c) the address of the applicant and his address for service;

(d) the title of the invention;

(e) the date of filing of the application for a patent;

(f) the application number;

(g) where a declaration has been made for the purposes of section 5(2)—

(i) the date of filing of each earlier relevant application specified in the declaration,

(ii) its application number, and

(iii) the country it was filed in or in respect of; and

(h) the date of the application’s publication.

(2) But where a person’s application under rule 11(1)(a) or (b) has been accepted by the comptroller, the comptroller may omit from the register his name and address (or, as the case may be, his address) as that of the person believed to be the inventor.

(3) Where an application for a patent has been published, the comptroller must enter each of the following matters in the register as soon as practicable after the event to which they relate—

(a) the date on which a request is made by an applicant for the substantive examination of his application;

(b) the date on which an application is terminated or withdrawn.

(4) When the patent is granted, the comptroller must enter each of the following matters in the register—

(a) the date on which the comptroller granted the patent;

(b) the name of the proprietor of the patent;

(c) where the address of the proprietor or his address for service was not entered in the register under paragraph (1), that address or address for service.

(5) In relation to a request for an opinion under section 74A, the comptroller must enter each of the following matters in the register as soon as practicable after the event to which they relate—

(a) a notice that a request under section 74A(1)(a) or (b) has been received;

(b) a notice that such a request has been refused or withdrawn;

(c) a notice that an opinion has been issued.

(6) A notice of any transaction, instrument or event mentioned in section 32(2)(b) or 33(3) must be entered in the register as soon as practicable after it occurs (or, if later, when the application is published).

(7) The comptroller may, at any time, enter in the register such other particulars as he thinks fit.

Advertisement in relation to register

45.  The comptroller may publish or advertise such things done under the Act or these Rules in relation to the register as he thinks fit.

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

46.—(1) An application under section 32(6) for a certified copy of an entry in the register, or a certified extract from the register, must be made on Patents Form 23.

(2) A person may apply on Patents Form 23 for an uncertified copy of an entry in the register or an uncertified extract from the register and, on payment of the prescribed fee, he shall be entitled to such a copy or extract.

(3) A person may apply on Patents Form 23 for a certificate which certifies that—

(a) an entry has or has not been made in the register; or

(b) something which the comptroller is authorised to do has or has not been done.

Registrations of transactions, instruments and events

47.—(1) An application to register (or in the case of an application for a patent which has not been published, to give notice of) any transaction, instrument or event mentioned in section 32(2)(b) or 33(3) must—

(a) be made on Patents Form 21; and

(b) include evidence establishing the transaction, instrument or event.

(2) The comptroller may direct that such evidence as he may require in connection with the application shall be sent to him within such period as he may specify.

Copies of documents and corrections in relation to the register

Copies of documents

48.—(1) A person may apply to the comptroller for a certified copy of any relevant document and, on payment of the prescribed fee, he shall be entitled to such a copy.

(2) A person may apply to the comptroller for an uncertified copy of any relevant document and, on payment of the prescribed fee, he shall be entitled to such a copy.

(3) But a person is not entitled to a copy of a relevant document where—

(a) it is not available for inspection under section 118; or

(b) making or providing such a copy would infringe copyright.

(4) For the purposes of this rule a relevant document is any of the following—

(a) an application for a patent which has been published;

(b) a specification of a patent;

(c) any other document, or extract from any such document, kept at the Patent Office.

(5) An application under paragraph (1) or (2) must be made on Patents Form 23.

Correction of name, address and address for service

49.—(1) Any person may request that a correction be entered in the register or made to any application or other document filed at the Patent Office in respect of any of the following—

(a) his name;

(b) his address;

(c) his address for service.

(2) A request under paragraph (1)(a) to correct a name must be made on Patents Form 20.

(3) Any other request under paragraph (1) must be made in writing.

(4) If the comptroller has reasonable doubts about whether he should make the correction—

(a) he must inform the person making the request of the reason for his doubts; and

(b) he may require that person to file evidence in support of the request.

(5) If the comptroller has no doubts (or no longer has doubts) about whether he should make the correction, he must enter the correction in the register or make it to the application or document.

(6) For the purposes of this rule a request for a correction includes a correction made for the purposes of section 117.

Request for correction of error

50.—(1) Subject to rule 49, any person may request the correction of an error in the register or in any document filed at the Patent Office in connection with registration.

(2) The request must be—

(a) made in writing; and

(b) accompanied by sufficient information to identify the nature of the error and the correction requested.

(3) If the comptroller has reasonable doubts about whether there is an error—

(a) he shall inform the person making the request of the reason for his doubts; and

(b) he may require that person to furnish a written explanation of the nature of the error or evidence in support of the request.

(4) If the comptroller has no doubts (or no longer has doubts) about whether an error has been made he shall make such correction as he may agree with the proprietor of the patent (or, as the case may be, the applicant).

Requests for information or documents

Restrictions on inspection of documents

51.—(1) For the purposes of section 118(1) the prescribed restrictions are those set out in paragraphs (2) and (3).

(2) No document may be inspected—

(a) where that document was prepared by the comptroller, an examiner or the Patent Office for internal use only;

(b) where the circumstances specified in section 118(4) exist, before the end of the period of 14 days beginning with the date of the notification under rule 52(2);

(c) where that document is a request or application made under section 118 or rule 46(2), 48(2) or 54(1); or

(d) where that document includes matter—

(i) which in the comptroller’s opinion disparages any person in a way likely to damage him, or

(ii) the inspection of which would in his opinion be generally expected to encourage offensive, immoral or anti-social behaviour.

(3) Unless in a particular case the comptroller otherwise directs, no document may be inspected—

(a) where that document was filed at the Patent Office in connection with an application under section 40(1) or (2) or 41(8);

(b) where that document is treated as a confidential document under rule 53;

(c) where—

(i) that document was prepared by the comptroller, an examiner or the Patent Office other than for internal use, and

(ii) it contains information which the comptroller considers should remain confidential;

(d) where that document relates to an international application for a patent and the International Bureau would not be permitted to allow access to that document under the Patent Co-operation Treaty; or

(e) where—

(i) the comptroller has accepted a person’s application under rule 11(1)(a) or (b), and

(ii) that person’s name and address can be identified from that document as those of the inventor or of the person believed to be the inventor (or, as the case may be, his address can be so identified).

(4) In this rule references to a document include part of a document.

Request for information where section 118(4) applies

52.—(1) Where the circumstances specified in section 118(4) exist, a request under section 118(1) must be accompanied by evidence verifying their existence.

(2) The comptroller must notify the applicant for the patent of any request.

(3) The notification must be accompanied by a copy of the request and the accompanying evidence.

(4) The applicant may, before the end of the period of 14 days beginning with the date of the notification, inform the comptroller that the circumstances specified in section 118(4) do not exist; otherwise the comptroller may treat him as accepting that those circumstances exist.

Confidential documents

53.—(1) Where a person files a document at the Patent Office or sends it to an examiner or the comptroller, any person may request that the document be treated as a confidential document.

(2) The comptroller must refuse any request where it relates to—

(a) a Patents Form; or

(b) any document filed in connection with a request under section 74A.

(3) A request to treat a document as confidential must—

(a) be made before the end of the period of 14 days beginning with the date on which the document was—

(i) filed at the Patent Office, or

(ii) received by the comptroller, an examiner or the Patent Office; and

(b) include reasons for the request.

(4) Where a request has been made under paragraph (1), the document must be treated as confidential until the comptroller refuses that request or gives a direction under paragraph (5).

(5) If it appears to the comptroller that there is good reason for the document to remain confidential, he may direct that the document shall be treated as a confidential document; otherwise he must refuse the request made under paragraph (1).

(6) But where the comptroller believes there is no longer a good reason for the direction under paragraph (5) to continue in force, he must revoke it.

(7) In this rule references to a document include part of a document.

Requests for certain information

54.—(1) Where a person requests to be notified of a relevant event, he must use Patents Form 49.

(2) Where a person has made such a request, the comptroller must notify him that the relevant event has occurred as soon as practicable after the event.

(3) But the comptroller shall not give him information or permit him to inspect a document unless he would be entitled to such information or to inspect such a document under section 118.

(4) A request on Patents Form 49 must be for information regarding a single relevant event only.

(5) For the purposes of paragraph (1), in relation to an application for a patent, each of the following is a relevant event—

(a) an applicant requesting, or failing to request, a substantive examination before the end of the period prescribed for the purposes of section 18(1);

(b) the application being published;

(c) the notice of grant of the patent being published under section 24;

(d) the application being terminated or withdrawn.

(6) For the purposes of paragraph (1), in relation to a patent, each of the following is a relevant event—

(a) a request for an opinion under section 74A;

(b) the patent ceasing to have effect by reason of section 25(3);

(c) the renewal fee and any additional fee being paid during the period specified in section 25(4);

(d) an application being made for the restoration of the patent which has ceased to have effect.

(7) For the purposes of paragraph (1), in relation to a patent or an application for a patent, each of the following is a relevant event—

(a) an entry being made in the register;

(b) a document becoming available for inspection under section 118 (by reason of a prescribed restriction no longer applying to the document);

(c) an application to register a transaction, instrument or event being made under rule 47;

(d) a matter being published in the journal.

Bibliographic information about an unpublished application

55.  For the purposes of section 118(3)(b) the following bibliographic information is prescribed—

(a) the name of the applicant;

(b) the title of the invention;

(c) the number of the application;

(d) the date of filing of the application;

(e) where a declaration has been made for the purposes of section 5(2)—

(i) the date of filing of each earlier relevant application specified in the declaration,

(ii) its application number, and

(iii) the country it was filed in or in respect of;

(f) where an application has been terminated or withdrawn, that information; and

(g) where a transaction, instrument or event mentioned in section 32(2)(b) or 33(3) is notified to the comptroller, that information.