The Patents Rules 2007 No. 3291

Rule 73

SCHEDULE 3 U.K. PROCEEDINGS HEARD BEFORE THE COMPTROLLER

PART 1 U.K. APPLICATIONS, REFERENCES AND REQUESTS

• Patents Act 1977

• section 8(1) (reference regarding entitlement in relation to a patent under the Act)

• section 10 (request for directions for handling a joint application)

• section 11(5) (reference regarding entitlement to a licence to continue working after transfer of application)

• section 12(1) (reference regarding entitlement in relation to a foreign or convention patent)

• section 12(4) (reference involving joint applications on entitlement in relation to a foreign or convention patent)

• section 13(3) (application to comptroller to remove person mentioned as inventor)

• section 37(1) (determination of right to patent after grant)

• section 38(5) (reference regarding entitlement to a licence to continue working after transfer of patent)

• section 40 (application for compensation by an employee)

• section 41(8) (application to vary order for compensation for certain inventions)

• section 46(3) (application to settle terms of licence available as of right)

• section 47(3) (application to cancel licence available as of right)

• section 48(1) (application for a compulsory licence)

• section 50A(2) (application following merger and market investigation)

• section 51(1) (application by Minister following report of Competition Commission)

• section 52(2)(a) (application to cancel compulsory licence)

• section 61(3) (reference on question of infringement before the comptroller)

• section 71 (declaration of non-infringement)

• section 72 (application to revoke patent)

• Patents Rules 2007

• rule 10(2) (application to be mentioned as inventor)

• rule 88(1) (application to hold proceedings in Scotland)

• paragraph 7(4) of Schedule 1 (notice of objection to expert)

• Compulsory Licensing Regulation

• Article 5(c) of the Compulsory Licensing Regulation (application to terminate [F1 compulsory pharmaceutical] licence)

• Article 6(1) of that Regulation (application for [F2 a compulsory pharmaceutical])

• Article 10(8) of that Regulation (application to access books and records)

• Article 16(1), second paragraph, of that Regulation (application for a review of [F2 a compulsory pharmaceutical])

• Article 16(4) of that Regulation (application for modification of [F2 a compulsory pharmaceutical])

• Medicinal Products Regulation and Plant Protection Products Regulation

• Article 14(d) of the Medicinal Products Regulation and the Plant Protection Products Regulation (request to review lapse of supplementary protection certificate)

• Article 15 of those Regulations (application for declaration of invalidity of supplementary protection certificate)

• Article 15a of the Medicinal Products Regulation (application for revocation of an extension of the duration of a supplementary protection certificate)

Textual Amendments

F1 Words in Sch. 3 Pt. 1 substituted (31.12.2020) by The Patents (Amendment) (EU Exit) Regulations 2019 (S.I. 2019/801), regs. 1, 18(4)(a); 2020 c. 1, Sch. 5 para. 1(1)

F2 Words in Sch. 3 Pt. 1 substituted (31.12.2020) by The Patents (Amendment) (EU Exit) Regulations 2019 (S.I. 2019/801), regs. 1, 18(4)(b); 2020 c. 1, Sch. 5 para. 1(1)

PART 2 U.K. OPPOSITIONS WHICH START PROCEEDINGS

• Patents Act 1977

• section 27(5) (opposition to amendment of specification after grant)

• section 29(2) (opposition to surrender of patent)

• section 47(6) (opposition to cancellation of licence available as of right), where the application was made by the proprietor of the patent

• section 75(2) (opposition to amendment during infringement or revocation proceedings)

• section 117(2) (opposition to correction of error in patents and applications)

PART 3 U.K. OPPOSITIONS AFTER PROCEEDINGS HAVE STARTED

• Patents Act 1977

• section 47(6) (opposition to cancellation of licence available as of right), where the application was made by a person other than the proprietor of the patent

• section 52(1) (opposition to an application for compulsory licence or under section 50A or 51)

• section 52(2)(b) (opposition to an application to cancel a compulsory licence)

PART 4 U.K. RULES WHICH APPLY TO ANY PROCEEDINGS HEARD BEFORE THE COMPTROLLER

• Patents Rules 2007

• rule 74 (overriding objective)

• rule 79 (copies of documents)

• rule 80(2) to (6) (evidence and the hearing)

• rule 81 (alteration of time limits)

• rule 82 (general powers of the comptroller in relation to proceedings before him)

• rule 84 (hearings in public)

• rule 87 (evidence in proceedings before the comptroller)

PART 5 U.K. RULES WHICH APPLY TO A REVIEW OF AN OPINION

• Patents Rules 2007

• rule 83 (striking out a statement of case and summary judgment)

• rule 85 (security for costs or expenses)

• rule 86 (powers of comptroller to compel attendance of witness and production of documents)

• rule 88 (proceedings in Scotland)