The Patents Rules 1995

HEARINGS, AGENTS AND CORRECTION OF ERRORS

Comptroller’s discretionary powers

88.—(1) Before exercising any discretionary power vested in him by or under the Act adversely to any party to a proceeding before him, the comptroller shall, unless the party concerned consents to shorter notice, give that party at least fourteen days' notice of the time when he may be heard.

(2) If, in inter partes proceedings, a party desires to be heard, he shall give notice in writing to the comptroller, and the comptroller may refuse to hear any party who has not given such notice before the day appointed for the hearing.

(3) In inter partes proceedings, any party who intends to refer at the hearing to any document (other than a report of a decision of any court or of the comptroller) not already mentioned in the proceedings shall, unless the comptroller consents and the other party agrees, give at least fourteen days' notice of his intention with details of, or a copy of, the document to the comptroller and the other party.

(4) After hearing the party or parties desiring to be heard or, if no party so desires, without a hearing, the comptroller shall decide the matter and shall notify all parties of his decision and, if any party so desires, shall give his reasons for the decision.

Admittance to hearings before comptroller

89.—(1) Subject to the following provisions of this rule, where a hearing before the comptroller of any dispute between two or more parties relating to any matter in connection with a patent or an application for a patent takes place after the publication of the application under section 16, the hearing of the dispute shall be in public.

(2) After consulting those parties to the dispute who appear in person or are represented at a hearing to which paragraph (1) above applies, the comptroller may direct that the hearing be not held in public, but without prejudice to paragraph (3) below.

(3) A member of the Council on Tribunals or of its Scottish Committee may, in his capacity as such, attend such a hearing or any other hearing before the comptroller under these Rules.

Agents

90.—(1) Unless the comptroller otherwise directs in any particular case—

(a) all attendances upon him may be made by or through an agent; and

(b) every notice, application or other document filed under the Act may be signed by an agent.

(2) Where after a person has become a party to proceedings before the comptroller he appoints—

(a) an agent for the first time, the newly appointed agent shall file Patents Form 51/77 on or before the first occasion when he acts as agent; or

(b) one agent in substitution for another, the newly appointed agent shall file in duplicate Patents Form 51/77 on or before the first occasion when he acts as agent and the comptroller shall send one copy of the form to the previously appointed agent.

Correction of errors in patents and applications

91.—(1) Except where rule 45(3) or paragraph 4 of Schedule 4 has effect, a request for the correction of an error of translation or transcription or of a clerical error or mistake in any specification of a patent, in an application for a patent or in any document filed in connection with a patent or such an application shall be made on Patents Form 11/77 clearly identifying the proposed correction; and the comptroller may, if he thinks fit, require that the correction be shown on a copy of the document of which correction is sought.

(2) Where such a request relates to a specification, no correction shall be made therein unless the correction is obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as the correction.

(3) Where the comptroller requires notice of the proposed correction to be advertised, he shall advertise the request and the nature of the proposed correction in the Journal.

(4) At any time within two months after the date of the advertisement, any person may give notice to the comptroller of opposition to the request on Patents Form 15/77.

(5) Such notice shall be accompanied by a copy thereof and be supported by a statement in duplicate setting out fully the facts on which the opponent relies and the relief which he seeks.

(6) The comptroller shall send a copy of the notice and the statement to the person making the request who, if he desires to proceed with the request, shall within the period of two months beginning on the date when the copies are sent to him, file a counter-statement in duplicate setting out fully the grounds on which he contests the opposition and the comptroller shall send a copy of the counter-statement to the opponent.

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