The Patents Rules 1990

Availability of cultures to experts

3.—(1) Where, before the preparations for publication under section 16 of an application for a patent have been completed, the applicant gives notice to the comptroller on Patents Form 8A/77 of his intention that a sample of the micro-organism should be made available only to an expert, the provisions of this paragraph shall have effect.

(2) The comptroller—

(a) shall publish with the application notice that the provisions of this paragraph have effect; and

(b) notwithstanding paragraph 2 above, shall not, until the patent is granted or the application has been withdrawn, has been taken to be withdrawn, has been treated as having been withdrawn, has been refused or is treated as having been refused, issue any certificate authorising release of a sample otherwise than under this paragraph.

(3) Any person wishing to have a sample of the micro-organism made available (“the requester”)—

(a) shall apply to the comptroller on Patents Form 8B/77 (which shall be filed in duplicate together, in the case of a micro-organism of which a culture is deposited under the Budapest Treaty with an international depository authority, with the form provided for by the Regulations under that Treaty) nominating the person (“the expert”) to whom he wishes the sample to be made available; and

(b) shall at the same time file undertakings by the expert as set out in subparagraph (3) of paragraph 2 above in accordance with the provisions of that paragraph.

(4) The comptroller shall send a copy of Patents Form 8B/77 filed under subparagraph (3) above to the applicant for the patent and shall specify the period within which the applicant may object, in accordance with subparagraph (5) below, to a sample of the micro-organism being made available to the expert.

(5) Unless, within the period specified by the comptroller under subparagraph (4) above (or within such longer period as the comptroller may, on application made to him within that period, allow), the applicant for the patent sends notice in writing to the comptroller that he objects to a sample of the micro-organism being made available to the expert and gives his reasons for his objection, the comptroller shall send a copy of any form lodged with him under subparagraph (3)(a) above and of his certificate authorising the release of the sample—

(a) to the applicant for the patent,

(b) to the depository institution concerned,

(c) to the requester, and

(d) to the expert.

(6) Where, in accordance with subparagraph (5) above, the applicant for the patent sends notice to the comptroller of his objection to the issue of a certificate in favour of the expert, the comptroller—

(a) shall decide, having regard to the knowledge, experience and technical qualifications of the expert and to any other factors he considers relevant, whether to issue his certificate in favour of the expert; and

(b) if he decides to authorise the release of the sample to the expert, shall send to the persons referred to in subparagraph (5) above a copy of any form lodged with him under subparagraph (3)(a) above and of his certificate authorising the release of the sample to the expert.

(7) Before making a decision in accordance with subparagraph (6) above, the comptroller shall afford the applicant and the requester the opportunity of being heard.

(8) If the comptroller decides under subparagraph (6) above not to issue his certificate in favour of the expert, the requester may, by notice in writing to the comptroller and the applicant, nominate another person as the expert for the purposes of this paragraph; and the comptroller shall give such directions as he shall think fit with regard to the subsequent procedure.

(9) Nothing in this paragraph shall affect the rights under section 55 of any government department or any person authorised in writing by a government department.