Patents Act 1977

123 Rules. U.K.

(1) The Secretary of State may make such rules as he thinks expedient for regulating the business of the Patent Office in relation to patents and applications for patents (including European patents, applications for European patents and international applications for patents) and for regulating all matters placed by this Act under the direction or control of the comptroller; and in this Act, except so far as the context otherwise requires, “prescribed” means prescribed by rules and “rules” means rules made under this section.

(2) Without prejudice to the generality of subsection (1) above, rules may make provision—

(a) prescribing the form and contents of applications for patents and other documents which may be filed at the Patent Office and requiring copies to be furnished of any such documents;

(b) regulating the procedure to be followed in connection with any proceeding or other matter before the comptroller or the Patent Office and authorising the rectification of irregularities of procedure;

(c) requiring fees to be paid in connection with any such proceeding or matter or in connection with the provision of any service by the Patent Office and providing for the remission of fees in the prescribed circumstances;

(d) regulating the mode of giving evidence in any such proceeding and empowering the comptroller to compel the attendance of witnesses and the discovery of and production of documents;

(e) requiring the comptroller to advertise any proposed amendments of patents and any other prescribed matters, including any prescribed steps in any such proceeding;

(f) requiring the comptroller to hold proceedings in Scotland in such circumstances as may be specified in the rules where there is more than one party to proceedings under section 8, 12, 37, 40(1) or (2), 41(8), 61(3), 71 or 72 above;

(g) providing for the appointment of advisers to assist the comptroller in any proceeding before him;

(h) prescribing time limits for doing anything required to be done in connection with any such proceeding by this Act or the rules and providing for the alteration of any period of time specified in this Act or the rules;

(i) giving effect to the right of an inventor of an invention to be mentioned in an application for a patent for the invention;

(j) without prejudice to any other provision of this Act, requiring and regulating the translation of documents in connection with an application for a patent or a European patent or an international application for a patent and the filing and authentication of any such translations;

(k) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . F1

(l) providing for the publication and sale of documents in the Patent Office and of information about such documents.

(3) Rules may make different provision for different cases.

[F2 (3A) It is hereby declared that rules—

(a) authorising the rectification of irregularities of procedure, or

(b) providing for the alteration of any period of time,

may authorise the comptroller to extend or further extend any period notwithstanding that the period has already expired.]

(4) Rules prescribing fees shall not be made except with the consent of the Treasury.

(5) The remuneration of any adviser appointed under rules to assist the comptroller in any proceeding shall be determined by the Secretary of State with the consent of the [F2 Treasury] and shall be defrayed out of moneys provided by Parliament.

(6) Rules shall provide for the publication by the comptroller of a journal (in this Act referred to as “the journal”) containing particulars of applications for and grants of patents, and of other proceedings under this Act.

(7) Rules shall require or authorise the comptroller to make arrangements for the publication of reports of cases relating to patents, trade marks [F3 registered designs or design right] decided by him and of cases relating to patents (whether under this Act or otherwise) trade marks, registered designs [F4 , copyright and design right] decided by any court or body (whether in the United Kingdom or elsewhere).

Textual Amendments

F1 S. 123(2)(k) repealed by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 303(2), Sch. 8

F2 Words substituted by virtue of S.I. 1981/1670 arts. 2, 3(5)

F3 Words substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 303(1), Sch. 7 para. 22(a)

F4 Words substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 303(1), Sch. 7 para. 22(b)

Modifications etc. (not altering text)

C1 S. 123(7) extended by Patents, Designs and Marks Act 1986 (c. 39, SIF 67A), s. 2(3), Sch. 2 Pt. I para. 1(2)(e)(iii)