The Patents Rules 1990

PRELIMINARY

Citation and commencement

1.  These Rules may be cited as the Patents Rules 1990 and shall come into force on 7th January 1991.

Interpretation

2.  In these Rules—

“the Act” means the Patents Act 1977;

“the 1949 Act” means the Patents Act 1949(1);

“declared priority date” means—

(a)

the date of filing of the earliest relevant application specified in a declaration made for the purposes of section 5 where the priority date claimed in the declaration has not been lost or abandoned and where the declaration has not been withdrawn before preparations for the publication of the application in suit have been completed by the Patent Office in accordance with section 16;

(b)

the date of filing of any such application for a patent as is referred to in section 127(4) which is specified in a declaration made for the purposes of that section;

(c)

where an application for a European patent (UK) is, by virtue of section 81(1), to be treated as an application for a patent under the Act, the date of filing of the earliest previous application mentioned in the declaration of for a European patent (UK) under Article 88(1) of the European Patent Convention where the priority date claimed in the declaration has not been lost or abandoned and where the declaration has not been withdrawn before the comptroller directs that the application for a European patent (UK) shall be so treated; or

(d)

where an international application for a patent (UK) is to be treated as an application for a patent under the Act, the date of filing of the earliest application filed in or for a State which is a party to the Convention for the Protection of Industrial Property signed at Paris on 20th March 1883 the priority of which is claimed in a declaration filed for the purposes of Article 8 of the Patent Co-operation Treaty, provided that such priority claim has not been lost or abandoned under the provisions of that Treaty;

“Journal” means the Official Journal (Patents) published in accordance with rule 115.

Construction

3.  In these Rules, save where otherwise indicated—

(a) references to a section are references to that section of the Act;

(b) references to a rule are references to that rule in these Rules;

(c) references to a Schedule are references to that Schedule to these Rules;

(d) references to a form are references to that form as set out in Schedule 1;

and references to the filing of a form or other document are references to filing it at the Patent Office.

Forms

4.—(1) The forms of which the use is required by these Rules (except the forms mentioned in rule 123(1)) are those set out in Schedule 1.

(2) A requirement under these Rules to use such a form is satisfied by the use either of a replica of that form or of a form which is acceptable to the comptroller and contains the information required by the form set out in that Schedule.

International exhibitions

5.—(1) An applicant for a patent who wishes the disclosure of matter constituting an invention to be disregarded in accordance with section 2(4)(c) shall, at the time of filing the application for the patent, inform the comptroller in writing that the invention has been displayed at an international exhibition.

(2) The applicant shall, within four months of filing the application, file a certificate, issued at the exhibition by the authority responsible for the exhibition, stating that the invention was in fact exhibited there. The certificate shall also state the opening date of the exhibition and, where the first disclosure of the invention did not take place on the opening date, the date of the first disclosure. The certificate shall be accompanied by an identification of the invention, duly authenticated by the authority.

(3) For the purposes of section 130(2) a statement may be published in the Journal that an exhibition described in the statement falls within the definition of international exhibition in subsection (1) of that section.

(4) In the case of an international application for a patent (UK), the application of this rule shall be subject to the provisions of rule 85(3).

Declaration of priority for the purposes of section 5

6.—(1) A declaration for the purposes of section 5 shall be made at the time of filing the application for a patent (“the application in suit”) and shall state the date of filing of any application specified in the declaration and the country in or for which it was made.

(2) Subject to the provisions of rule 26 and paragraphs (3), (4) and (5) below, where the application in suit is for a patent under the Act, the applicant shall, within the period of sixteen months after the declared priority date, furnish to the Patent Office in respect of every application specified in the declaration—

(a) its file number; and

(b) except where paragraph (3) below has effect, a copy of that application duly certified by the authority with which it was filed or otherwise verified to the satisfaction of the comptroller.

(3) Where an application specified in the declaration is an application for a patent under the Act or an international application for a patent which is filed at the Patent Office,—

(a) if the application is filed under section 15(4), the applicant shall, at the time of filing the application, file—

(i) a request that a copy of the application specified in the declaration be prepared for use in the Patent Office; and

(ii) Patents Form 24/77 requesting the comptroller to certify the same; or

(b) if the application is filed otherwise than under section 15(4), the applicant shall file that request and that form in compliance with any request made by the comptroller.

(4) Where the application in suit is an application for a European patent (UK) which, by virtue of section 81, is to be treated as an application for a patent under the Act, the requirements of paragraphs (1) and (2) above shall be treated as having been complied with to the extent that the requirements of rule 38(1) to (3) of the Implementing Regulations to the European Patent Convention have been fulfilled.

(5) Where the application in suit is an international application for a patent (UK) which is to be treated as an application for a patent under the Act, the requirements of paragraphs (1) and (2) above shall be treated as having been complied with to the extent that the requirements of rules 4.10(a) and (c) and 17.1(a) or (b) of the Regulations made under the Patent Co-operation Treaty have been fulfilled.

(6) Where a copy of an application is filed or treated as having been filed under paragraph (2)(b), (3), (4) or (5) above and that application is in a language other than English, subject to rule 85(3)(c) and (d), a translation thereof into English verified to the satisfaction of the comptroller as corresponding to the original text shall be filed within the period of twenty-one months after the declared priority date.

(7) In the case of an international application for a patent (UK), the application of paragraph (6) above shall be subject to the provisions of rule 85(3)(c) and (d).

(1)

1949 c. 87.