Statutory Instruments
PATENTS
Made
30th March 1999
Laid before Parliament
9th April 1999
Coming into force
4th May 1999
The Secretary of State, in exercise of the powers conferred upon him by sections 5(2), 14(6), 15(4), 32(5), 89, 89A, 120(1), 123 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 1999 and shall come into force on 4th May 1999.
2. The Patents Rules 1995(3) shall be amended as follows.
3. In rule 2 (interpretation), for the definition of “Journal” substitute “means the journal published in accordance with rule 115”.
4. In rule 6(5) (declaration of priority), for the words “of rules 4.10(a) and (c) and 17.1(a) or (b)”, substitute “of rule 4.10(a) and (b), subject to rules 26bis.1 and 26bis.2(b), and of rule 17.1”.
5. In rule 22 (unity of invention), for paragraph (1) substitute–
“(1) Without prejudice to the generality of section 14(5)(d), where two or more inventions are claimed (whether in a single claim or in separate claims), and there exists between or among those inventions a technical relationship which involves one or more of the same or corresponding special technical features, then those inventions shall be treated as being so linked as to form a single inventive concept for the purposes of the Act.”.
6. In rule 24 (new applications under section 15(4)), omit paragraph (3).
7. In rule 49(1) (inspection of register), for the words “between the hours of 10 am and 4 pm” substitute “between the hours of 9 am and 5 pm”.
8. In rule 78(2) (amendment of patent), for the word “amendement” substitute “amendment”.
9. Paragraphs (1) and (2) of rule 79 (entries in the register) are omitted.
10. In rule 85 (international applications for patents)–
(a)in paragraph (5)–
(i)for the words “of the latter.” at the end of subparagraph (c), there shall be substituted “of the latter; and”;
(ii)immediately after subparagraph (c) there shall be inserted–
“(d)may exclude any textual matter contained in a sequence listing forming part of the description if such textual matter complies with Rule 12.1(d) of the said Regulations and the description complies with Rule 5.2(b) of the said Regulations.”; and
(b)in paragraph (11), for subparagraph (b) substitute–
“(b)the priority claim made under Article 8(1) of the Patent Co-operation Treaty has been considered not to have been made by the receiving office or the International Bureau because of an error made by the office or the Bureau,”.
11. In paragraph (a) of rule 98 (hours of business), for the words “and at 4 pm for all other business” substitute the words “and at 5 pm for all other business”.
12. In rule 99 (excluded days), after paragraph (2) insert–
“(3) Tuesday 4th January 2000 shall be an excluded day for all purposes under the Act.”.
13. In rule 102 (remission of fees), for paragraphs (2), (3) and (4) substitute–
“(2) In cases falling within paragraph (1)(b) above a request for remission of the whole or part of the fee shall be made in writing by the applicant to the comptroller.
(3) No appeal shall lie from any decision of the comptroller under this rule.”.
14. In rule 110(2) (alteration of time limits), for the figure “78(1)” substitute “78(2)”.
15. For rule 115 (the journal), substitute–
“115. The comptroller shall publish a journal containing particulars of applications for patents and other proceedings under the Act and any other information he may deem to be generally useful or important.”.
16. In rule 118 (transmittal and late payment fees), for paragraph (1) substitute–
“(1) Subject to paragraph (3) below, payment of a prescribed transmittal fee referred to in rule 14.1 of the Regulations under the Patent Co-operation Treaty shall be made to the Patent Office as the competent receiving Office under the said Treaty.”.
17. In rule 119 (certified copies), for the words “rule 20.9” substitute “rule 17.1 or rule 20.9”.
18. In Schedule 1 (general forms), for item 4 of Patents Form 9/77 (request for a preliminary examination and search) substitute–
“4. Is this request for:
a)A preliminary examination and search under Section 17(1) for an international application which has been searched in the international phase? (see note (f))
b)A preliminary examination and search under Section 17(1) for any other application?
c)A supplementary search under Section 17(8)?
d)A search of a further invention under Section 17(6)?
(Answer this question by writing a), b), c) or d).
If your answer is d), identify the invention to be searched by referring to the claims (see note (c))”.
Kim Howells
Parliamentary Under Secretary of State for Competition and Consumer Affairs,
Department of Trade and Industry
30th March 1999
(This note is not part of the Rules)
These Rules amend the Patents Rules 1995 (S.I. 1995/2093). In addition to minor and drafting amendments, these Rules–
(a)extend the hours during which public inspection of the register is permitted, to between 9am and 5pm on business days (rule 7);
(b)revoke the provisions of rule 79 (entries in the Register of European Patents) (rule 9);
(c)extend the hours for certain transaction of business of the Patent Office from 4pm to 5pm (rule 11);
(d)make Tuesday 4th January 2000 an excluded day; that is to say a day on which the Patent Office is closed for the purposes of the transaction by the public of business with that Office (rule 12).
These Rules take effect on 4th May 1999.