The Patents Rules 1995

Period for putting application in order

34.—(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 sub-paragraphs (b) and (c) hereof and paragraph (1A) below, shall be—

(i) 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; or

(ii) the period of twelve months calculated from the date the first report under section 18 in respect of that application is sent to the applicant,

whichever expires the later;

(b) in the case of a new application for a patent arising from and made in accordance with an order of the comptroller 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;

(c) in the case of a new application under section 15(4), shall be the period determined in accordance with sub-paragraph (a) above in respect of the earlier application whose date of filing is to be treated under section 15(4) as the date of filing of the new application.

(1A) Where the first report under section 18 is not sent to the applicant before the expiry of the period prescribed by sub-paragraph (a)(i) of paragraph (1) above, that period shall be extended to such date as that report is sent to the applicant and the period specified by sub-paragraph (a)(ii) of paragraph (1) shall then apply.

(2) In a case where,—

(a) 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

(c) 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) 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.