The Patents Rules 1995

GRANT, AMENDMENT AND CONTINUATION OF PATENT

Certificates of grant

38.  A certificate that a patent has been granted shall be in the form set out in Schedule 3.

Renewal of patents

39.—(1) If, except in the case of a European patent (UK), it is desired to keep a patent in force for a further year after the expiration of the fourth or any succeeding year from the date of filing an application for that patent as determined in accordance with section 15, Patents Form 12/77, in respect of the next succeeding year, accompanied by the prescribed renewal fee for that year, shall be filed in the three months ending with the fourth or, as the case may be, succeeding anniversary of the date of filing:

• Provided that, where a patent is granted in the three months ending with the fourth or any succeeding anniversary as so determined or at any time thereafter, Patents Form 12/77, accompanied by the prescribed renewal fee, in respect of the fifth or succeeding year may be filed not more than three months before the expiration of the fourth or relevant succeeding year but before the expiration of three months from the date on which the patent is granted.

(2) If it is desired, at the expiration of the fourth or any succeeding year from the date of filing an application for a European patent (UK), as determined in accordance with Article 80 of the European Patent Convention, and provided that mention of the grant of the patent is, or has been, published in the European Patent Bulletin, to keep the patent in force, Patents Form 12/77, accompanied by the prescribed renewal fee, shall be filed in the three months ending with the fourth or, as the case may be, succeeding anniversary of the date of filing as so determined.

• Provided that, where any renewal fee is due on, or within the period of three months after, the date of publication in the European Patent Bulletin of the mention of the grant of the patent, that renewal fee may be paid within those three months.

(3) On receipt of the prescribed renewal fee accompanied by Patents Form 12/77 duly completed, the comptroller shall (if the patent has been granted) issue a certificate of payment on the appropriate portion of that form.

(4) Where the period for payment of a renewal fee pursuant to paragraph (1) or (2) above has expired, the comptroller shall, not later than six weeks after the last date for payment under that paragraph and if the fee still remains unpaid, send to the proprietor of the patent a notice reminding him that payment is overdue and of the consequences of non-payment.

(5) The comptroller shall send a notice under paragraph (4) above to—

(a) the address specified by the proprietor on payment of the last renewal fee; or

(b) where another address has been notified to him for that purpose by the proprietor since the last renewal, that address,

and, in any other case, the address for service entered in the register.

(6) A request for extending the period for payment of a renewal fee shall be made on Patents Form 12/77 and shall be accompanied by the prescribed renewal fee and the prescribed additional fee for late payment.

Amendment of specification after grant

40.—(1) An application to the comptroller for leave to amend the specification of a patent shall—

(a) be made on Patents Form 11/77,

(b) clearly identify the proposed amendment and state the reasons for it, and

(c) be advertised by the comptroller in the Journal together with the nature of the proposed amendment.

(2) At any time within two months from the date of the advertisement in the Journal, any person may give notice to the comptroller of opposition to the application to amend on Patents Form 15/77.

(3) Such notice shall be accompanied by a copy thereof and be supported by a statement in duplicate setting out fully the facts upon which the opponent relies and the relief which he seeks. The comptroller shall send a copy of the notice and of the statement to the applicant.

(4) Within the period of two months beginning on the date when such copies are sent to him, the applicant shall, if he wishes to continue with the application, file a counter-statement in duplicate setting out fully the grounds upon which the opposition is resisted; and the comptroller shall send a copy of the counter-statement to the opponent.

(5) The comptroller may give such directions as he may think fit with regard to the subsequent procedure.

(6) An application under this rule shall be accompanied by—

(a) if the specification as published is not in English, a document containing a translation into English of the part of the specification proposed to be amended and a translation into English of the part as proposed to be amended verified to the satisfaction of the comptroller as corresponding to the orginal text; and

(b) in the case of an application for amendment of a European patent (UK), a copy of the specification for that patent as published,

and, if the specification as published is not in English, the applicant shall, if the comptroller so requests, supply a translation thereof into English verified to his satisfaction as corresponding to the original text.

(7) The comptroller may, if he thinks fit, require that the amendment be shown on a copy of the specification of which amendment is sought.

(8) Where leave to amend a specification is given, the applicant shall, if the comptroller so requires, and within a time to be fixed by him, file a new specification as amended, which shall be prepared in accordance with rules 16, 18 and 20.

Restoration of lapsed patents under section 28

41.—(1) An application under section 28 for the restoration of a patent—

(a) may be made at any time within the period of nineteen months beginning on the day on which it ceased to have effect; and

(b) shall be made on Patents Form 16/77 supported by evidence of the statements made in it;

and the comptroller shall publish in the Journal notice of the making of the application.

(2) If, upon consideration of the evidence, the comptroller is not satisfied that a case for an order under section 28 has been made out, he shall notify the applicant accordingly and, unless within one month the applicant requests to be heard in the matter, the comptroller shall refuse the application.

(3) If the applicant requests a hearing within the time allowed, the comptroller shall, after giving the applicant an opportunity of being heard, determine whether the application shall be allowed or refused.

(4) If the comptroller decides to allow the application, he shall notify the applicant accordingly and require him, within two months after the notification is sent to him, to file Patents Form 53/77, together with Patents Form 12/77, duly completed, and the amount of any unpaid renewal fee, upon receipt of which the comptroller shall order the restoration of the patent and advertise the fact in the Journal.

Notification of lapsed patent

42.  Where a patent has ceased to have effect because a renewal fee has not been paid within the period prescribed in rule 39(1) or (2) and the extended period specified in section 25(4) has expired without the renewal fee and prescribed additional fee having been paid, the comptroller shall, within six weeks after the expiration of the extended period, notify the proprietor of the patent of the fact and draw his attention to the provisions of section 28.

Surrender of patents

43.—(1) A notice of an offer by a proprietor of a patent under section 29 to surrender his patent shall be—

(a) given on Patents Form 2/77 accompanied by:

(i) a statement setting out the reasons for making the offer; and

(ii) a declaration that no action is pending before the court for infringement or for revocation of the patent, or

(iii) if an action before the court is pending, full particulars of the action in writing;

and

(b) advertised by the comptroller in the Journal.

(2) At any time within two months from the advertisement any person may give notice of opposition to the surrender to the comptroller on Patents Form 15/77.

(3) Such notice shall be accompanied by a copy thereof and be supported by a statement in duplicate setting out fully the facts upon which the opponent relies and the relief which he seeks. The comptroller shall send a copy of the notice and of the statement to the proprietor of the patent.

(4) Within the period of two months beginning on the date when such copies are sent to him, the proprietor of the patent shall, if he wishes to continue with the surrender, file a counter-statement in duplicate setting out fully the grounds upon which the opposition is resisted; and the comptroller shall send a copy of the counter-statement to the opponent.

(5) The comptroller may give such directions as he may think fit with regard to the subsequent procedure.