The Patents (Amendment) Rules 1987

Statutory Instruments

1987 No. 288

PATENTS

The Patents (Amendment) Rules 1987

Made

27th February 1987

Laid before Parliament

2nd March 1987

Coming into force

Rules 1, 8, 9, 10, 11 and 12, and rules 2 and 3 as provided in rule 1(2)

24th March 1987

Remainder

1st September 1987

The Secretary of State, in exercise of the powers conferred upon him by sections 77(9), 78(8), 120(1) and 123(1), (2) and (3) of the Patents Act 1977(1), after consultation with the Council on Tribunals pursuant to section 10(1) of the Tribunals and Inquiries Act 1971(2), and as to rule 3 with the consent of the Treasury pursuant to subsection (4) of the said section 123, hereby makes the following Rules:

Preliminary

1.—(1) These Rules may be cited as the Patents (Amendment) Rules 1987.

(2) The following rules and Schedules shall come into force on 24th March 1987—

(a) this rule;

(b) rule 2 and Schedule 1 so far as they relate to Patents Forms Nos. 50/77, 52/77 and 53/77;

(c) rule 3 and Schedule 2 so far as they relate to the fees payable in respect of those forms; and

(d) rules 8, 9, 10, 11 and 12.

(3) The following rules and Schedules shall come into force on 1st September 1987—

(a) rule 2 and Schedule 1 so far as they relate to Patents Forms Nos. 54/77, 55/77, 56/77 and 57/77;

(b) rule 3 and Schedule 2 so far as they relate to the fees payable in respect of those forms; and

(c) rules 4, 5, 6 and 7.

(4) Rules 20(9), 25(4), 28 and 80 of the Patents Rules 1982(3) are hereby revoked, and the reference to rule 80 in Patents Form No. 40/77 set out in Schedule 2 to the said Rules shall be omitted.

2.—(1) There shall be substituted for Patents Form No. 50/77 as set out in Schedule 2 to the Patents Rules 1982 the form set out in Part I of Schedule 1 hereto.

(2) The forms set out in Part II of Schedule 1 hereto shall be inserted at the end of the said Schedule 2.

3.  Part A of the Schedule to the Patents (Fees) Rules 1986(4) shall be amended in accordance with Schedule 2 hereto.

Translations

4.—(1) 1st September 1987 is the day appointed under section 77(9) of the Patents Act 1977 for the purpose of the coming into force of subsection (6) of that section.

(2) This rule shall not apply in the case of a European patent (UK) mention of whose grant is published in the European Patent Bulletin before that day.

5.—(1) 1st September 1987 is the day appointed under section 78(8) of the Patents Act 1977 for the purpose of the coming into force of subsection (7) of that section.

(2) This rule shall not apply in the case of an application for a European patent (UK) which is published by the European Patent Office before that day.

6.  The following rules shall be inserted after rule 79 of the Patents Rules 1982—

“Translations of European patents (UK) filed under section 77(6)

79A.— (1) A translation filed under section 77(6) shall be filed in duplicate and shall be accompanied by Patents Form No. 54/77 in duplicate, in the case of a translation filed under section 77(6)(a), or by Patents Form No. 55/77 in duplicate, in the case of a translation filed under section 77(6)(b).

(2) A translation filed under section 77(6)(a) shall comprise a translation of the entirety of the published specification of the patent, irrespective of whether a translation of all or any part of the claims contained in the specification has previously been filed under section 78(7) but subject to paragraph (5) below, and shall include any drawings in the specification, irrespective of whether the drawings contain textual matter.

(3) A translation filed under section 77(6) shall comply with the following requirements as to presentation, subject to paragraph (4) below in the case of any drawings—

(a) it shall permit of direct reproduction by photography, electrostatic processes, photo offset and micro-filming, in an unlimited number of copies;

(b) it shall be on A4 paper (29.7cm x 21cm.) which shall be pliable, strong, white, smooth, matt and durable;

(c) each sheet of paper shall be free from cracks, creases and folds and used on one side only;

(d) each sheet shall be used with its short sides at the top and bottom (upright position);

(e) the minimum margins shall be—

top	2 cm.
left side	2.5 cm.
right side	2 cm.
bottom	2 cm.;

(f) the margins of the sheets shall be completely blank;

(g) the translation shall be typed or printed in single-line spacing (unless the comptroller otherwise permits), in a dark, indelible colour and in characters of which the capital letters are not less than 0.21cm. high, save that graphic symbols and characters and chemical and mathematical formulae may, instead of being typed or printed, be written or drawn;

(h) the translation shall be reasonably free from deletions and other alterations, overwritings and interlineations and shall, in any event, be legible;

(i) each sheet (other than a sheet of drawings) shall be numbered consecutively in arabic numerals.

(4) Where a translation including any drawings is filed, the sheets of drawings shall correspond exactly in content and presentation to the sheets of drawings which were published by the European Patent Office, except that—

(a) each sheet shall be numbered consecutively in arabic numerals, as a separate series from that used for the other sheets of the translation, if not so numbered when published by the European Patent Office; and

(b) any textual matter contained in the published drawings shall be replaced with a translation into English.

(5) For the purposes of paragraph (2) above, the published specification of the patent shall be taken not to include—

(a) anything which does not consist of, or form part of, the description of the invention, the claims or the drawings referred to in the description or the claims, or

(b) any claim not having effect in the United Kingdom, or

(c) anything published in a language other than the language of the proceedings (within the meaning of Article 14 of the European Patent Convention).

Periods prescribed under section 77(6)

79B.— (1) The period prescribed under section 77(6)(a) for filing a translation of the specification of a European patent (UK) and paying the prescribed fee shall be three months from the date of publication of the mention of the grant of the patent in the European Patent Bulletin.

(2) The period prescribed under section 77(6)(b) for filing a translation of an amendment to a European patent (UK) and paying the prescribed fee shall be three months from the date of publication by the European Patent Office of the specification of the patent as amended.

Translations of claims of applications for European patents (UK) filed under section 78(7)

79C.— (1) A translation filed under section 78(7) shall be filed in duplicate and shall be accompanied by Patents Form No. 56/77 in duplicate.

(2) The translation shall comply with the requirements contained in rule 79A(3).

Corrected translations filed under section 80(3)

79D.— (1) A corrected translation filed under section 80(3) shall be filed in duplicate.

(2) The corrected translation shall comply with the requirements contained in rule 79A(3) and (4).

(3) Publication of the corrected translation shall be requested on Patents Form No. 57/77, which shall be filed in duplicate.

(4) The period prescribed under section 80(3) for payment of the prescribed fee shall be fourteen days from the day on which the corrected translation is filed.

Verification of translation

79E.   A translation shall be verified to the satisfaction of the comptroller as corresponding to the original text of—

(a) the specification, in the case of a translation filed under section 77(6)(a), or

(b) the amendment, in the case of a translation filed under section 77(6)(b), or

(c) the claims of the specification of the application, in the case of a translation filed under section 78(7), or

(d) the specification of the patent or the claims of the application, as the case may be, in the case of a translation filed under section 80(3);

and if such verification does not accompany the translation when filed it shall be filed within one month of the sending by the comptroller of a written request for such verification.

Inspection of translations

79F.   A request for inspection of a translation published under section 77(8), 78(7) or 80(3) shall be made on Patents Form No. 23/77.”

7.  There shall be inserted at the end of rule 113(4) of the Patents Rules 1982 the words, “unless such a translation has already been filed under section 77(6)”; and in Patents Form No. 23/77 set out in Schedule 2 to the said Rules there shall be substituted for the reference to rules 48, 49 and 93 a reference to rules 48, 49, 79F and 93.

Miscellaneous

8.  In paragraph (16) of rule 20 of the Patents Rules 1982 the words “free from” in the second place where they occur shall be deleted.

9.  In rule 26(3) of the Patents Rules 1982 there shall be inserted after the words “rule 110(3)” the words “or (3C)”.

10.  For rule 99 of the Patents Rules 1982 there shall be substituted the following—

“99.— (1) The following shall be excluded days for all purposes under the Act—

(a) all Sundays;

(b) Good Friday and Christmas Day;

(c) any day specified as or proclaimed to be a bank holiday in England in or under section 1 of the Banking and Financial Dealings Act 1971(5);

(d) any Saturday immediately preceded by one of the above.

(2) Saturdays not falling within paragraph (1) above shall be excluded days for all purposes except the filing of applications in respect of which no declaration for the purposes of section 5(2) is made.”

11.  For rule 100 of the Patents Rules 1982 there shall be substituted the following—

“100.— (1) Subject to paragraph (2) below, any document filed in any proceedings before the comptroller may, if he thinks fit, be amended, and any irregularity in procedure in or before the Patent Office may be rectified, on such terms as he may direct.

(2) Where the irregularity in procedure consists of a failure to comply with any limitation as to times or periods specified in the Act or the 1949 Act or prescribed in these Rules or the Patents Rules 1968(6), as they continue to apply, the comptroller may direct that the time or period in question shall be altered if the irregularity is attributable wholly or in part to an error, default or omission on the part of the Patent Office, but not otherwise.

(3) Paragraph (2) above is without prejudice to the comptroller’s power to extend any times or periods under rule 110 below.”

12.—(1) In paragraph (1) of rule 110 of the Patents Rules 1982 there shall be substituted for the words “paragraph (3)” the words “paragraphs (3) and (3A)”.

(2) For paragraphs (2) and (3) of the said rule 110 there shall be substituted the following—

“(2) The rules referred to in paragraph (1) above are rules 6(1), 17(3), 26 (so far as it relates to rule 6(1)), 39(1) and (2), 40(2), 43(2), 60(2), 65(1), 66(1), 71(1), 78(1), 81(1), 82(1) and 91(4).

(3) A time or period prescribed in rules 6(2) and (6), 15(1), 17(2), 23, 25(2), 25(3) (except so far as it relates to the filing of claims for the purposes of the application and the filing of the abstract), 26 (except so far as it relates to rule 6(1)), 33(2), (3) and (4), 34, 79B, 81(2) and (3), 82(2) and (3), 83(3) and 85(1) and (3) above shall, if not previously extended, be extended for one month upon filing Patents Form No. 50/77; and where in any proceedings more than one such time or period expires on the same day (but not otherwise), those times or periods may be extended upon the filing of a single such form.

(3A) Without prejudice to paragraph (3) above, a time or period prescribed in the rules referred to in that paragraph may, upon request made on Patents Form No. 52/77, be extended or further extended by the comptroller if he thinks fit, upon such terms as the comptroller may direct, and whether or not the time or period, including any extension obtained under paragraph (3), has expired:

• Provided that no extension may be granted under this paragraph in relation to any time or period expiring before 24th March 1987.

(3B) A single request may be made under paragraph (3A) above for the extension of more than one time or period in the same proceedings if the extensions are to be to a common date (but not otherwise).

(3C) If on consideration of a request under paragraph (3A) above the comptroller decides that the extension requested (or, in a case falling within paragraph (3B) above, any or all of the extensions requested) may be granted he shall notify the applicant accordingly and invite him to file Patents Form No. 53/77, upon receipt of which the comptroller shall effect the extension or extensions in accordance with the decision.”

Geoffrey Pattie

Department of Trade and Industry

23rd February 1987

We consent to the making of rule 3 of these Rules.

Mark Lennox-Boyd

Michael Neubert

Two of the Lords Commissioners of Her Majesty’s Treasury

27th February 1987

Rule 2

SCHEDULE 1

PART I

REVISED PATENTS FORM NO 50/77

PART II ADDITIONAL FORMS

Rule 3

SCHEDULE 2 AMENDMENTS TO THE PATENTS (FEES) RULES 1986

In Part A of the Schedule to the Patents (Fees) Rules 1986—

(a) in the entry relating to Patents Form No. 50/77, after the words “On request for extension of time” there shall be inserted the words “or period under Rule 110(3)”.

(b) after the entry relating to Patents Form No. 51/77 the following entries shall be inserted:

“52/77	On request for extension of time or period under Rule 110(3A)	100
53/77	Additional fee for extension of time or period under Rule 110(3C)	100
54/77	On filing of translation of European Patent (UK) under section 77(6)(a)	25
55/77	On filing of translation of amendment of European Patent (UK) under section 77(6)(b)	25
56/77	On request for publication of translation of claims of application for European Patent (UK) filed under section 78(7)	25
57/77	On request for publication of a corrected translation filed under section 80(3)	25”.

Explanatory Note

(This note is not part of the Rules)

These Rules bring into force section 77(6) and section 78(7) of the Patents Act 1977 which provide for the filing of translations into English of specifications and amendments of European patents (UK) and claims of applications for European patents (UK) which have been published in French and German under the European Patent Convention by the European Patent Office. They also amend the Patents Rules 1982 so as to prescribe forms and to introduce other requirements for these translations and they amend the Patents (Fees) Rules 1986 to prescribe fees in connection with these translations. Similar provision is made for corrected translations filed under section 80(3) of the 1977 Act where the translation originally filed confers narrower protection than that conferred by the French or German text published by the European Patent Office. A consequential amendment is made to rule 113 of the 1982 Rules.

Other amendments to the 1982 and 1986 Rules are also made, namely—

(a) rule 20 of the 1982 Rules, which prescribes the size and presentation of documents contained in a patent application, is amended;

(b) rules 25(4) and 80 of the 1982 Rules, which are no longer of practical effect, are revoked;

(c) rule 28 of the 1982 Rules, which provides for the determination of the time when the preparations for publication of a patent application under section 16 of the 1977 Act are completed, is revoked;

(d) rule 99 of the 1982 Rules, which specifies days as excluded days, is revised;

(e) rule 100 of the 1982 Rules, which provides for the amendment of documents and the correction of irregularities in procedure, is revised;

(f) rule 110 of the 1982 Rules, which provides for the alteration of time limits, is amended and new forms and fees are prescribed.

(1)

1977 c. 37.

(2)

1971 c. 62.

(3)

S.I. 1982/717; the relevant amending instrument is S.I. 1985/785.

(4)

S.I. 1986/583.

(5)

1971 c. 80.

(6)

S.I. 1968/1389, amended by S.I. 1970/955, 1971/1917, 1973/66, 1975/891, 1021 and 1262 and revoked with savings by S.I. 1978/216.