The Patents Rules 1990

Explanatory Note

(This note is not part of the Rules)

These Rules consolidate, with modifications, the Patents Rules 1982 as amended. In addition to minor and drafting amendments, they make the following changes of substance—

(a) the forms prescribed under the Patents Act 1977 (“the Act”) and the forms remaining under the Patents Act 1949 have been modified (rule 4 and Schedule 1; rule 123(1) and Schedule 5);

(b) modified procedures are provided for references to the comptroller concerning questions about entitlement to patents before grant and determination of rights to patents after grant (rules 7, 8 and 54);

(c) the period within which a person must send a response to a communication in proceedings before the comptroller between parties has been reduced (from three months) to two months from the date when the communication was sent to him (rules 7, 8, 12, 13, 14, 40, 43, 54, 58, 59, 62, 64, 65, 71, 72, 73, 74, 75, 78, 91 and 108);

(d) revised provision is made in relation to applications for patents, and to patents, for inventions which require for their performance the use of micro-organisms (rule 17 and Schedule 2);

(e) any figure of drawings to accompany the abstract must now be indicated on the abstract itself (rule 19);

(f) revised provision is made relating to new applications for patents which derive from earlier applications (rules 24 and 26);

(g) the comptroller is empowered to send copies of documents referred to in the examiner’s reports under sections 17 and 18 of the Act to persons concerned (rules 28, 32 and 33);

(h) a prescribed fee can now be required where a supplementary search under section 17(8) of the Act is necessary (rule 32);

(i) new provision is made relating to the period during which an application for a patent is to be put in order where observations have been made under section 21 of the Act (rule 34);

(j) revised provision is made relating to the manner in which amendments and corrections are to be made in an application for a patent or a patent (rules 35, 36, 40, 47 and 91);

(k) the comptroller is now required to send to the applicant copies of documents received by him relating to observations under section 21 of the Act (rule 37);

(l) revised provision is made for the payment of fees for the renewal of patents (rule 39);

(m) new and additional provision is made for time limits relating to the restoration of lapsed patents (rule 41);

(n) the comptroller may now prevent inspection or copying of documents (or parts of documents) containing offensive or disparaging matter (rules 52 and 93);

(o) modified procedures are provided concerning applications for licences of right (rule 62);

(p) the provisions relating to translations provided in connection with European Patents (UK) and applications therefor are modified (rule 80 and Schedule 4);

(q) a revised time limit is introduced relating to the conversion of a European patent application into an application under the Act (rule 82);

(r) the provisions relating to international applications for patents have been modified (rule 85);

(s) provision is now made for the abridgement, with consent of the person affected, of time limits restraining exercise of the comptroller’s discretion (rule 88);

(t) certain limitations as to times or periods under the Rules may now be extended before they have expired (rule 100);

(u) additional provision is made for the extension of certain new time limits introduced by these Rules (rule 110); and

(v) the requirements concerning translations of documents filed at the Patent Office are modified (rule 113).

At the date of making of these Rules, the address of the Patent Office is State House, 66–71 High Holborn, London WC1R 4TP.