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PART 2 U.K.APPLICATIONS FOR PATENTS

Form and content of applicationsU.K.

Applications for the grant of patents under sections 14 and 15U.K.

12.—(1) A request for the grant of a patent must be made on Patents Form 1.

(2) Where the documents filed at the Patent Office to initiate an application for a patent do not include the applicant's name and address, the comptroller shall notify the applicant that his name and address are required.

(3) Where the applicant has been so notified, he must, before the end of the period of two months [F1beginning immediately after] the date of the notification, file his name and address; otherwise the comptroller may refuse his application.

(4) The specification mentioned in section 14(2)(b) must be preceded by the title of the invention and must be set out in the following order—

(a)description;

(b)the claim or claims; and

(c)any drawing [F2or photograph] referred to in the description or any claim.

(5) But paragraph (4) does not apply where an application is delivered in electronic form or using electronic communications.

(6) The title of the invention must be short and indicate the matter to which the invention relates.

[F3(6A) The claim or claims must not rely in respect of the technical features of the invention on references to the description or any drawing or photograph unless the feature cannot otherwise be clearly and concisely defined in words, by a mathematical or chemical formula or by any other written means.]

(7) Where the specification includes drawings [F4or photographs,] the description must include a list of drawings [F4and photographs] briefly describing each of them.

(8) Where—

(a)the documents filed at the Patent Office to initiate an application for a patent include something which is or appears to be a description of the invention in a language other than English or Welsh; and

(b)the applicant has not filed a translation into English or Welsh of that thing,

the comptroller shall notify the applicant that a translation is required.

(9) Where the applicant has been so notified, he must, before the end of the period of two months [F5beginning immediately after] the date of the notification, file a translation; otherwise the comptroller may refuse his application.

Textual Amendments

Biological material and sequence listingsU.K.

13.—(1) The provisions of Schedule 1 prescribe the circumstances in which the specification of an application for a patent, or of a patent, for an invention which involves the use of or concerns biological material is to be treated as disclosing the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art.

(2) Where the specification of an application for a patent discloses a sequence, it must include a sequence listing.

(3) Where an applicant has not provided a sequence listing on filing the application, the comptroller may specify a period within which the applicant must provide the sequence listing; and if it is not provided within this period, the comptroller may refuse the application.

(4) Where a sequence listing is provided after the date of filing the application, the listing must be accompanied by a declaration that it does not contain matter extending beyond the sequence disclosed in the application.

(5) The sequence listing must comply with any requirements and standards adopted under the Patent Co-operation Treaty for the presentation of sequence listings in patent applications.

(6) A sequence listing shall, if it is reasonably possible, be delivered to the comptroller in electronic form or using electronic communications, even where the application for the patent is not delivered in electronic form or using electronic communications.

(7) A sequence listing may be set out either in the description or at the end of the application, but if set out at the end of the application rule 12(4) shall not apply.

Size and presentation of applicationU.K.

14.—(1) The contents of all documents (including annotations to drawings [F6and photographs]) contained in an application for a patent must be in English or Welsh.

(2) The requirements for the documents contained in an application for a patent (other than drawings [F7and photographs]) are set out in Parts 1 and 2 of Schedule 2.

(3) The requirements for a drawing [F8and a photograph] contained in an application are set out in Parts 1 and 3 of that Schedule.

(4) All documents contained in an application (including drawings [F9and photographs]) must comply with the requirements set out in Part 4 of that Schedule.

(5) Paragraphs (2) and (3) do not apply to an application, or a sequence listing contained in an application, which is delivered in electronic form or using electronic communications.

Textual Amendments

The abstractU.K.

15.—(1) The abstract must start with a title for the invention.

(2) The abstract must contain a concise summary of the matter contained in the specification.

(3) That summary must include—

(a)an indication of the technical field to which the invention belongs;

(b)a technical explanation of the invention;

(c)the principal use of the invention.

(4) Where the specification contains more than one drawing [F10or photograph], the abstract must include an indication of the drawing [F10or photograph] which should accompany the abstract when it is published.

(5) Where it appears to the comptroller that a drawing [F11or photograph] included in the specification better characterises the invention he shall publish it with the abstract.

(6) Where a feature of the invention included in the abstract is illustrated in a drawing [F12or photograph], the feature must be followed by the reference for that feature used in that drawing [F12or photograph].

(7) The abstract must not contain any statement on the merits or value of the invention or its speculative application.

Textual Amendments

Single inventive conceptU.K.

16.—(1) For the purposes of the Act, two or more inventions shall be treated as being so linked as to form a single inventive concept where there exists between those inventions a technical relationship which involves one or more of the same or corresponding special technical features.

(2) In paragraph (1) “special technical features” means those technical features which define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.

References under section 15(1)(c)(ii)U.K.

17.—(1) A reference made under section 15(1)(c)(ii) must include—

(a)the date of filing of the earlier relevant application;

(b)its application number; and

(c)the country it was filed in or in respect of.

(2) Subject to paragraph (3), the copy of the application provided under section 15(10)(b)(ii) must—

(a)be duly certified by the authority with which it was filed or otherwise verified to the satisfaction of the comptroller; and

(b)where it is in a language other than English or Welsh, be accompanied by—

(i)a translation into English of that application, or

(ii)a declaration that the description filed under sub-paragraph (i) of section 15(10)(b) is a complete and accurate translation into English of the description contained in the application provided under sub-paragraph (ii) of that provision.

(3) Where the application or a copy of the application is available to the comptroller it shall, for the purposes of section 15(10)(b)(ii), be treated as having been filed in accordance with rules.

Missing partsU.K.

18.—(1) The period prescribed for the purposes of section 15(5)(b) and (6) is the period beginning with the date of filing of the application for a patent and ending with the date of the preliminary examination.

(2) But where the applicant is notified under section 15A(9) that a drawing or part of the description of the invention has been found to be missing, the period prescribed for the purposes of section 15(5)(b) and (6) shall be the period of two months [F13beginning immediately after] the date of the notification.

(3) An applicant may only withdraw a missing part by giving written notice to the comptroller.

(4) A request made under section 15(7)(b) must—

(a)be made in writing;

(b)include sufficient information to identify where in the priority application the contents of the document filed under section 15(5)(b) were included; and

(c)be made before the end of the period prescribed for the purpose of section 15(5)(b).

(5) Any request under section 15(7)(b) shall be considered never to have been made where—

(a)the priority application does not contain every missing part filed under section 15(5); or

(b)the applicant fails, before the end of the relevant period, to furnish to the comptroller copies of all earlier relevant applications—

(i)duly certified by the authority with which they were filed, or

(ii)otherwise verified to the satisfaction of the comptroller.

(6) But paragraph (5)(b) does not apply in respect of an earlier relevant application where that application or a copy of the application is available to the comptroller.

(7) For the purposes of paragraph 5(b) the relevant period is—

(a)sixteen months [F14beginning immediately after] the declared priority date; or

(b)if it expires earlier, the period of four months [F15beginning immediately after] the date on which the request was made under section 15(7)(b).

Textual Amendments