The Patents (Electronic Communications) (Amendment) Rules 2003

Citation and commencement

1.  These Rules may be cited as the Patents (Electronic Communications) (Amendment) Rules 2003 and shall come into force on 1st April 2003.

Amendment of the Patents Rules 1995

2.  The Patents Rules 1995(1) shall be amended as follows.

3.  After paragraph (2) of rule 4 (forms) there shall be inserted—

“(3) A requirement under these Rules to use a form shall not apply if the comptroller, in directions made under section 124A(2), directs that the information required may be presented in some other manner.”.

4.  After rule 4 there shall be inserted—

“Multiple copies

4A.   Where a document is delivered to the comptroller in electronic form or using electronic communications, a requirement in these Rules for the document to be delivered to the comptroller with a copy or copies of that document or in duplicate or triplicate shall not apply if the requirement is removed or varied by the comptroller in directions made under section 124A.”.

5.  At the end of paragraph (2) of rule 16 (applications for the grant of patents under sections 14 and 15) there shall be inserted—

• “but, where the application is delivered in electronic form or using electronic communications, that order shall not apply to the extent that it has been removed or varied by the comptroller in directions made under section 124A and the specification shall comply with such directions.”.

6.  After paragraph (3) of rule 18 (drawings) there shall be inserted—

“(4) Where the application for a patent is delivered in electronic form or using electronic communications, paragraphs (1) and (2) shall not apply to the extent that they have been removed or varied by the comptroller in directions made under section 124A and drawings forming part of that application shall comply with such directions.”.

7.  After paragraph (15) of rule 20 (size and presentation of documents) there shall be inserted—

“(16) Where the application for a patent is delivered in electronic form or using electronic communications, paragraphs (2) to (10), (13) and (15) shall not apply to the extent that they have been removed or varied by the comptroller in directions made under section 124A and the application shall comply with such directions.”.

8.  After paragraph (1) of rule 31 (formal requirements) there shall be inserted—

“(1A) Where any of the requirements referred to in paragraph (1) do not apply by virtue of rule 18(4) or rule 20(16), the formal requirements for the purposes of the Act shall include the requirements of so much of any directions given by the comptroller under section 124A as replace those requirements.”.

9.  In rule 40—

(a) for paragraph (1) there shall be substituted—

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

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

(b) clearly identify the proposed amendment and state the reasons for it.”;

(b) after paragraph (1) there shall be inserted—

“(1A) If it is reasonably possible, the proposed amendment and the reasons for it shall also be set out and delivered to the comptroller in electronic form or using electronic communications.

(1B) The comptroller shall advertise in the Journal notice that an application has been made to amend the specification of a patent, and the advertisement shall state that any person may apply to the comptroller for a copy of the proposed amendment and the reasons given for it.”.

10.  In rule 78—

(a) for paragraph (1) there shall be substituted—

“(1) Where in any proceedings before the comptroller a proposed amendment to the specification of a patent made under section 75 is to be delivered to the comptroller it shall, if it is reasonably possible, be delivered to the comptroller in electronic form or using electronic communications.

(1A) If the comptroller requires it, notice that a proposal has been made to amend the specification of a patent shall be advertised in the Journal and the advertisement shall state that any person may apply to the comptroller for a copy of the proposed amendment.”;

(b) for paragraph (2) there shall be substituted—

“(2) Within two months of the date of the advertisement in the Journal, any person may give the comptroller notice of opposition to the proposed amendment on Patents Form 15/77.”.

11.  In Schedule 1 (general forms), Patents Form 11/77 is replaced by Patents Form 11/77 in the Schedule to these Rules.

12.  In Schedule 4 (translations of European Patents (UK) filed under section 77(6))—

(a) after paragraph 1(4) there shall be inserted—

“(4A) Where the translation filed under section 77(6) is delivered in electronic form or using electronic communications, subparagraphs (3) and (4) shall not apply to the extent that they have been removed or varied by the comptroller in directions made under section 124A and the presentation of the translation shall comply with such directions.”.

(b) in paragraph 3(3), for the word “The” at the beginning there shall be substituted “Subject to paragraph 1(4A) the”.

(c) in paragraph 4(2), for the word “The” at the beginning there shall be substituted “Subject to paragraph 1(4A) the”.

Melanie Johnson

Parliamentary Under-Secretary of State for Competition, Consumers and Markets,

Department of Trade and Industry

6th March 2003