The Patents (Amendment) Rules 1993

Statutory Instruments

1993 No. 2423

PATENTS

The Patents (Amendment) Rules 1993

Made

4th October 1993

Laid before Parliament

6th October 1993

Coming into force

1st November 1993

The Secretary of State, in exercise of the powers conferred upon him by sections 17(2), 32(2) and (7), 89, 118(1), 123(1)-(3) and 124 of the Patents Act 1977(1), after consultation with the Council on Tribunals pursuant to section 8(1) of the Tribunals and Inquiries Act 1992(2), hereby makes the following Rules:—

1.  These Rules may be cited as the Patents (Amendment) Rules 1993 and shall come into force on 1st November 1993.

2.  For rule 30 of the Patents Rules 1990(3) (hereinafter referred to as the principal Rules) there shall be substituted the following—

“30.— (1) There shall be furnished to the comptroller—

(a) by every applicant for the grant of a patent, an address for service in the United Kingdom for the purpose of his application, and

(b) notwithstanding the provisions of paragraphs (2) to (4) below, by every person (including the applicant for, or the proprietor of, a patent, as the case may be) concerned in any proceedings to which any of these Rules relate, an address for service in the United Kingdom,

and the address so furnished or, where another address (being an address in the United Kingdom) has been furnished in place thereof, that address shall be treated for the purposes of that application or those proceedings, as appropriate, as the address of that applicant or, as the case may be, of that person.

(2) Upon the grant of an application for a patent (not being an application for a European patent (UK)), the applicant’s address for service as shown in the register shall be treated as the address for service of the proprietor of the patent unless an alternative address is furnished.

(3) As from publication of the mention of the grant of every European patent (UK) in the European Patent Bulletin, the address for service of the proprietor shall be the address for service notified to the comptroller by or on behalf of the proprietor, whether before or after the said mention of the grant, and in the absence of any such notification the proprietor’s address on the register shall be treated as the address for service.

(4) An address for service for an applicant for, or a proprietor of, a patent may be withdrawn by the applicant or the proprietor or the person providing the address for service, as the case may be, by notice to the comptroller; and upon such notification the comptroller may treat the address of the applicant or the proprietor previously notified to him, or the address shown in the register, as the address for service until such time as an alternative address is furnished.”.

3.  In rule 31(1) of the principal Rules for “30” substitute “30(1)(a)”.

4.  In rule 85 of the principal Rules—

(a) in paragraph (2), after the words “patent (UK)” insert the words “after the international filing date”;

(b) in paragraph (9), for sub-paragraph (a) substitute the following—

“(a) the comptroller could have directed that an irregularity be rectified under rule 100, or could have granted a dispensation for the doing of any act or thing, or the production or filing of any document under rule 101, or could have granted an extension of time under rule 110, or could have extended the time or determined the times or periods under rule 111; and”.

5.  In rule 93 of the principal Rules—

(a) in paragraph (4), omit the word “and” after sub-paragraph (e) and insert after sub-paragraph (f) the following—

“; and

(g) that any documents issued by the Patent Office which the comptroller considers should be treated as confidential shall not be open to inspection unless the comptroller otherwise directs.”;

(b) in sub-paragraph (c) of paragraph (5), after “sent to” insert “or by”.

6.  In rule 94 of the principal Rules—

(a) for paragraph (1) substitute the following—

“(1) A person filing at, or sending to, the Patent Office a document other than a Patents Form, or any party to any proceedings to which the document relates, may, within fourteen days of the filing or sending of the document, request the comptroller (giving reasons for the request) to direct that the document or any part of it specified by him be treated as confidential, and the comptroller may, at his discretion, so direct; and, while the request is being considered by the comptroller, that document or part thereof (hereinafter referred to as the relevant document) shall not be open to public inspection.”;

(b) in paragraphs (2), (3) and (4), before the word “document” where it appears in each case, insert the word “relevant”; and

(c) in paragraph (5), before the word “document” where it appears for the second time insert the word “relevant”.

Patrick M'Loughlin

Parliamentary Under Secretary of State for Trade and Technology

Department of Trade and Industry

4th October 1993

Explanatory Note

(This note is not part of the Rules)

These Rules amend the Patents Rules 1990 (S.I. 1990/2384)—

(a) to replace rule 30 (address for service) with a rule which makes better provision for the furnishing of addresses by applicants for and proprietors of patents and persons concerned in proceedings under the Rules;

(b) in rule 85 to—

(i) clarify that rule 113(1) (which requires documents to be translated into English) does not apply where information relating to micro-organisms is added to an international application for a patent (UK) after the international filing date, and

(ii) extend the circumstances in which an international application for a patent (UK) shall not be treated as withdrawn under the Act;

(c) in rule 93—

(i) to provide under a new sub-paragraph (g) of paragraph (4) a restriction on the inspection of documents issued by the Patent Office which the comptroller considers should be treated as confidential, and

(ii) in paragraph (5)(c), to provide for any document sent by the Patent Office before 1st June 1978 as one which the comptroller is under no duty to make available for public inspection;

(d) in rule 94, to provide for a request to the comptroller for a document to be treated as confidential to be made also in respect of a specified part of a document.

(1)

1977 c. 37; section 89 was replaced by the Copyright, Designs and Patents Act 1988 (c. 48); section 123 was amended by the said Act of 1988, section 295 and Schedule 5, paragraph 29.

(2)

1992 c. 53.

(3)

S.I. 1990/2384, as amended by S.I. 1992/1142.