The Patents (Amendment) Rules 2005

Renewal of patents

6.  For rule 39(1) there shall be substituted—

“Renewal of patents: general

39.— (1) In this rule and in rules 39A to 39C—

“prescribed period” means the period prescribed by rule 39A or 39B for the payment of a renewal fee;

“renewal date” has the meaning given in rules 39A(2) to (4) and 39B(3);

“renewal fee” means the fee prescribed in respect of a renewal date(2).

(2) If the renewal fee is not paid by the end of the prescribed period, the patent shall cease to have effect at the end of the renewal date.

(3) Subject to paragraph (4), Patents Form 12/77 must be filed within the prescribed period.

(4) Where payment is made pursuant to section 25(4)(3), Patents Form 12/77 must accompany the renewal fee and the prescribed additional fee.

(5) On receipt of the renewal fee the comptroller shall issue a certificate of payment.

Renewal of patents: first renewal

39A.— (1) This rule prescribes the period for the payment of a renewal fee in respect of the first renewal date.

(2) Subject to paragraphs (3) and (4)—

(a) the first renewal date is the fourth anniversary of the date of filing; and

(b) the prescribed period is the period of three months ending with the last day of the month in which that renewal date falls.

(3) Where a patent is granted under the Act in the period of three months ending with the fourth anniversary of the date of filing, or at any time after that anniversary—

(a) the first renewal date is the last day of the period of three months beginning with the date on which the patent was granted; and

(b) the prescribed period begins with the date on which the patent was granted and ends with the last day of the month in which that renewal date falls.

(4) Where the grant of a patent is mentioned in the European Patent Bulletin in the period of three months ending with the fourth anniversary of the date of filing, or at any time after that anniversary—

(a) the first renewal date is the later of—

(i) the last day of the period of three months beginning with the date on which the grant of the patent was mentioned in the European Patent Bulletin (case A); or

(ii) the next anniversary of the date of filing to fall after the date on which the grant of the patent was so mentioned (case B); and

(b) the prescribed period is—

(i) in case A, the period beginning with the date on which the grant of the patent was mentioned in the European Patent Bulletin and ending with the last day of the month in which the first renewal date falls; or

(ii) in case B, the period of three months ending with the last day of the month in which the first renewal date falls.

Renewal of patents: subsequent renewals

39B.— (1) This rule prescribes the period for the payment of a renewal fee in respect of renewal dates subsequent to the first renewal date.

(2) The prescribed period is the period of three months ending with the last day of the month in which the renewal date falls.

(3) For those purposes—

(a) the second renewal date is the next anniversary of the date of filing to fall after the first renewal date; and

(b) each subsequent renewal date is the anniversary of the previous renewal date.

Renewal notice

39C.— (1) This rule applies where the renewal fee has not been received by the end of the prescribed period.

(2) The comptroller shall, within the period of six weeks immediately following the end of the prescribed period, and if the fee remains unpaid, send a renewal notice to the proprietor of the patent.

(3) The comptroller shall send the renewal notice to—

(a) the address specified by the proprietor on payment of the last renewal fee (or to another address that has since been notified to him for that purpose by the proprietor); or

(b) where such an address has not been so specified or notified, the address for service entered in the register.

(4) The renewal notice shall remind the proprietor of the patent—

(a) that payment is overdue; and

(b) of the consequences of non-payment.”.

(1)

Rule 39 was amended by SI 1999/3197.

(2)

See rule 3A of the Fees Rules, inserted by rule 22 of these Rules.

(3)

Section 25(4) is amended by section 8(2) of the Patents Act 2004, which is brought into force on 1st October 2005 by SI 2005/2471 (C.105).