The Patents (Amendment) (No. 2) Rules 2014

Opinions on prescribed matters

10.  After rule 93(5), insert—

“(6) The prescribed matters for the purposes of section 74A(1) are as follows—

(a) whether a particular act constitutes, or (if done) would constitute, an infringement of the patent;

(b) whether, or to what extent, an invention for which the patent has been granted is not a patentable invention(1);

(c) whether the specification of the patent discloses the invention clearly enough and completely enough for it to be performed by a person skilled in the art;

(d) whether the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent as filed or, if the patent was granted on a new application, in the earlier application as filed;

(e) whether the protection conferred by the patent has been extended by an amendment which should not have been allowed;

(f) whether a supplementary protection certificate(2) is invalid under Article 15 of the Medicinal Products Regulation(3); and

(g) whether a supplementary protection certificate is invalid under Article 15 of the Plant Protection Products Regulation(4).”

(1)

See section 1(1) of the Patents Act 1977 for the meaning of “patentable invention” (section 1(1) was amended by the Patents Act 2004, Schedule 2, paragraphs 1 and 2).

(2)

See section 128B(2) of the Patents Act 1977 for the definition of “supplementary protection certificate” (section 128B was inserted by S.I. 2007/3293).

(3)

See paragraphs 6(2) and 7(a) of Schedule 4A to the Patents Act 1977 for the meaning of “the Medicinal Products Regulation” (Schedule 4A was inserted by S.I. 2007/3293).

(4)

See paragraphs 6(2) and 7(b) of Schedule 4A to the Patents Act 1977 for the meaning of “the Plant Protection Products Regulation” (Schedule 4A was inserted by S.I. 2007/3293).