This is the original version (as it was originally made). This item of legislation is currently only available in its original format.
(This note is not part of the Rules)
These Rules amend the Patents Rules 2007 (SI 2007/3291).
Rule 3 amends rule 12 to permit photographs to be filed as part of an application for a patent. It also limits the use of “omnibus” claims (being claims which are drafted in terms of the invention “as described in” the description or drawings) to cases where the features of the invention cannot be clearly and concisely defined by other means.
Rules 4 and 5 amend rules 14 and 15 (which set out the requirements for the documents contained in an application for a patent/the abstract) to include references to photographs.
Rule 6 replaces rule 19 in relation to the deadline for filing a new application for a patent as mentioned in section 15(9) of the Patents Act 1977 (“the Act”) based on an earlier application (commonly known as a “divisional application”). New rule 19 retains the requirement that a divisional application may only be made before the earlier application has been granted, terminated or withdrawn (see section 15(9) of the Act and new rule 19(2)(a)). However, it removes the deadline for filing a divisional application based upon whether the earlier application has been found to meet the requirements for the grant of a patent under section 18 of the Act and provides a single deadline of three months before the compliance date of the earlier application (see rule 2(1) of the Patents Rules 2007 for the meaning of “compliance date”).
Rule 8 amends rule 32 to provide that the period for making a request to reinstate an application under section 20A of the Act is 12 months beginning immediately after the date on which the application was terminated.
Rule 9 amends rule 39 to provide that renewal notices shall be sent to the last address specified by the proprietor on payment of a renewal fee unless the proprietor has subsequently notified an address for this purpose.
Rule 10 amends rule 49 to clarify that a request for a correction in relation to a name or address in the register or any application or document may be made where there has been any change in those matters.
Rule 11 amends rule 65 to remove the requirement for international applications for patents to be filed at the Patent Office in triplicate.
Rule 12 inserts a new rule 66A which regulates the period during which an applicant may amend an international application for a patent (UK) filed under the Patent Co-operation Treaty(1) once it has begun the national phase of the application. The period varies depending upon whether and when the International Searching Authority (as defined in rule 64 of the Patents Rules 2007) sends to the applicant an International Search Report (as defined in rule 64 of the Patents Rules 2007) which the applicant has requested the International Searching Authority to conduct.
Rule 13 amends rule 75 to confer a discretion on the comptroller whether to advertise in the journal an amendment to the specification of a patent which is proposed by a proprietor under section 75 of the Act.
Rule 14 amends rule 101 to remove the requirement for the notification of the appointment of an agent on Patents Form 51 to be filed in duplicate.
Rule 15 amends Schedule 2 to apply to photographs the requirements in Parts 3 and 4 which apply to drawings. New paragraph 15 provides that drawings may be shaded in certain circumstances and new paragraph 20A provides that photographs must be black and white, clear and capable of direct reproduction.
Rule 16 amends Schedule 4 to enable the comptroller to extend the period of time permitted for furnishing an address for service in relation to an application for a patent.
Rule 17 is a transitional provision. The amendment made by rule 3(b) (which limits the use of omnibus claims) does not apply to a patent application whose compliance date (as defined in rule 2(1) of the Patents Rules 2007) is a date prior to 6th April 2017.
Rule 18 requires the Secretary of State to review the operation and effect of these Rules and publish a report by 6th April 2022 and within every five years after that.
A full impact assessment of the effect that this instrument will have on the costs of business, the voluntary sector and the public sector is available from the Intellectual Property Office, Concept House, Cardiff Road, Newport, South Wales, NP10 8QQ and is available with the Explanatory Memorandum alongside this instrument on the Legislation UK website at www.legislation.gov.uk.
The Patent Co-operation Treaty was made in Washington on 19th June 1970, amended on 28th September 1979 and modified on 3rd February 1984 and 3rd October 2001 (Treaty Series No. 78 (1978) Cmnd. 7340 as amended) and is available on the WIPO website.
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