Amendment of the Patents Rules 1995
3. For rule 6 there shall be substituted—
“Declaration of priority for the purposes of section 5(2)
6.—(1) Subject to paragraph (2) and rule 6A(4), a declaration for the purposes of section 5(2) shall be made at the time of filing the application for a patent.
(2) Subject to rule 6A(4), a declaration for the purposes of section 5(2) may be made after the date of filing provided that—
(a)it is made on Patents Form 3/77;
(b)it is made before the end of the period of sixteen months starting immediately following the date of filing of the earlier relevant application (or if there is more than one, the earliest of them) specified in that declaration; and
(c)the condition in paragraph (3) is met.
(3) The condition is that—
(a)the applicant has not made a request under section 16(1) to publish the application during the period prescribed for the purposes of that section; or
(b)any request made was withdrawn before the preparations for the publication of the application by the Patent Office had been completed.
(4) A declaration for the purposes of section 5(2) shall specify—
(a)the date of filing of each earlier relevant application; and
(b)the country in or for which it was made.
(5) In the case of a new application to which section 15(9) applies, no declaration shall be made which has not also been made in or in connection with the earlier application.
(6) For the purposes of rules 6B and 6C, “priority application” means an earlier relevant application specified in the declaration.
Request to the comptroller for permission to make a late declaration under section 5(2B)
6A.—(1) The period prescribed for the purposes of section 5(2A)(b) shall be the period of two months.
(2) A request under section 5(2B) may only be made where—
(a)it is made on Form 3/77;
(b)it is made before the end of the period allowed under section 5(2A)(b);
(c)it is supported by evidence of why the application in suit was not filed before the end of the period allowed under section 5(2A)(a); and
(d)the condition in paragraph (3) is met.
(3) The condition is that—
(a)the applicant has not made a request under section 16(1) to publish the application during the period prescribed for the purposes of that section; or
(b)any request made was withdrawn before the preparations for the publication of the application by the Patent Office had been completed.
(4) Where an applicant makes a request under section 5(2B), he shall make the declaration for the purposes of section 5(2) at the same time as making that request.
Filing of priority documents to support a declaration under section 5(2)
6B.—(1) In respect of each priority application to which this paragraph applies the applicant shall, before the end of the period of sixteen months starting on the declared priority date, furnish to the Patent Office the file number of that application; otherwise the declaration made for the purposes of section 5(2), in so far as it relates to the priority application, shall be disregarded.
(2) In respect of each priority application to which this paragraph applies the applicant shall, before the end of the period of sixteen months starting on the declared priority date, furnish to the Patent Office a copy of that application duly certified by the authority with which it was filed or otherwise verified to the satisfaction of the comptroller; otherwise the declaration made for the purposes of section 5(2), in so far as it relates to the priority application, shall be disregarded.
(3) Paragraph (1) applies to every priority application except where—
(a)the application in suit is treated as an application for a patent under the Act, by reason of a direction given under section 81, and the file number of the priority application was indicated in compliance with rule 38(2) of the Implementing Regulations to the European Patent Convention; or
(b)the application in suit is an international application for a patent (UK) and the file number of the priority application was indicated in compliance with rule 4.10(a) and (b) of the Regulations made under the Patent Co-operation Treaty.
(4) Paragraph (2) applies to every priority application except where—
(a)the application in suit is treated as an application for a patent under the Act, by reason of a direction given under section 81, and a certified copy of the priority application was filed in compliance with rule 38(3) of the Implementing Regulations to the European Patent Convention;
(b)the application in suit is an international application for a patent (UK) and a certified copy of the priority application was filed in compliance with rule 17.1 of the Regulations made under the Patent Co-operation Treaty; or
(c)the priority application or a copy of the priority application is kept at the Patent Office.
Translation of priority documents
6C.—(1) The comptroller may direct the applicant to comply with the requirements of paragraph (4), if—
(a)a copy of the priority application—
(i)was furnished in accordance with rule 6B(2);
(ii)was filed in compliance with rule 38(3) of the Implementing Regulations to the European Patent Convention;
(iii)was filed in compliance with rule 17.1 of the Regulations made under the Patent Co-operation Treaty; or
(iv)has been made by the comptroller in accordance with rule 112A(2);
(b)that copy is in a language other than English; and
(c)the matters disclosed in the priority application are relevant to the determination of whether or not an invention, to which the application in suit relates, involves an inventive step.
(2) In his direction under paragraph (1), the comptroller shall specify a period within which the applicant must comply with the requirements of paragraph (4).
(3) The comptroller shall not specify a period under paragraph (2) that ends after the grant of the patent.
(4) Where the comptroller has given a direction under paragraph (1), the applicant shall, before the end of the period specified by the comptroller, file—
(a)an English translation of the priority application; or
(b)a declaration that the application in suit is a complete translation into English of the priority application,
otherwise the declaration made for the purposes of section 5(2), in so far as it relates to the priority application, shall be disregarded.”.