The statement mentioned in section 2(4)(c) that an invention has been displayed at an international exhibition must be in writing.

The prescribed period for the purposes of section 2(4)(c) is four months F7beginning immediately after the date of filing.

But paragraphs (1) and (2) do not apply where rule 67(2) applies.

The certificate must include the opening date of the exhibition (or if later, the date on which the invention was first displayed).

The comptroller may publish a statement in the journal that a particular exhibition falls within the definition of “international exhibition” in section 130(1) (interpretation).

Subject to paragraph (2) and rule 7(9), a declaration for the purposes of section 5(2) must be made at the time of filing the application for a patent.

In the case of a new application filed as mentioned in section 15(9), no declaration shall be made which has not also been made in, or in connection with, the earlier application.

The period prescribed for the purposes of section 5(2A)(b) is two months.

Where that evidence does not accompany the request, the comptroller must specify a period within which the evidence must be filed.

In relation to a new application, a request under section 5(2B) may be made in writing, instead of on Patents Form 3, and no evidence shall accompany it.

Subject to paragraph (6) and rule 66(3), a request under section 5(2B) may only be made before the end of the period allowed under section 5(2A)(b).

Where a new application is filed after the end of the period allowed under section 5(2A)(b), a request under section 5(2B) may be made on the initiation date.

Where an applicant makes a request under section 5(2B), he must make the declaration for the purposes of section 5(2) at the same time as making that request.

In respect of each priority application to which this paragraph applies the applicant must, before the end of the relevant period, furnish to the comptroller the application number of that application; otherwise the comptroller must disregard the declaration made for the purposes of section 5(2), in so far as it relates to the priority application.

Paragraph (1) applies to every priority application except where the application in suit is an international application for a patent (UK) and the application number of the priority application was indicated in compliance with the Patent Co-operation Treaty.

For the purposes of this rule the relevant period is sixteen months F8beginning immediately after the declared priority date, subject to rule 21.

In his direction under paragraph (1), the comptroller shall specify a period within which the applicant must comply with the requirements of paragraph (4).

But the comptroller shall not specify a period that ends after the grant of the patent.

An inventor or joint inventor of an invention, if not mentioned in any published application for a patent, or in any patent granted, for the invention, must be mentioned in an addendum or an erratum to the application or patent.

A statement filed under section 13(2) must be made on Patents Form 7.

An application by an inventor under paragraph (1)(b) must be accepted by the comptroller.

Where the comptroller has accepted an inventor's application to make a waiver under this rule, the inventor may apply to the comptroller to end that waiver.

The comptroller may, if he thinks fit, accept an application to end a waiver, and his acceptance may be made subject to such conditions as he may direct.

An application under paragraph (1)(a) or (b) or under paragraph (4) may also be made by a person who is not the inventor, but who has been identified as such for the purposes of section 13(2).

Where a person makes an application in reliance on paragraph (6), the reference in this rule to an application to waive his right to have his name and address (or his address) mentioned shall be construed as a reference to an application not to have his name and address (or his address) mentioned; and paragraphs (4) and (5) shall be construed accordingly.

A request for the grant of a patent must be made on Patents Form 1.

Where the documents filed at the Patent Office to initiate an application for a patent do not include the applicant's name and address, the comptroller shall notify the applicant that his name and address are required.

Where the applicant has been so notified, he must, before the end of the period of two months F10beginning immediately after the date of the notification, file his name and address; otherwise the comptroller may refuse his application.

But paragraph (4) does not apply where an application is delivered in electronic form or using electronic communications.

The title of the invention must be short and indicate the matter to which the invention relates.

Where the specification includes drawings, the description must include a list of drawings briefly describing each of them.

Where the applicant has been so notified, he must, before the end of the period of two months F11beginning immediately after the date of the notification, file a translation; otherwise the comptroller may refuse his application.

The provisions of Schedule 1 prescribe the circumstances in which the specification of an application for a patent, or of a patent, for an invention which involves the use of or concerns biological material is to be treated as disclosing the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art.

Where the specification of an application for a patent discloses a sequence, it must include a sequence listing.

Where an applicant has not provided a sequence listing on filing the application, the comptroller may specify a period within which the applicant must provide the sequence listing; and if it is not provided within this period, the comptroller may refuse the application.

Where a sequence listing is provided after the date of filing the application, the listing must be accompanied by a declaration that it does not contain matter extending beyond the sequence disclosed in the application.

The sequence listing must comply with any requirements and standards adopted under the Patent Co-operation Treaty for the presentation of sequence listings in patent applications.

A sequence listing shall, if it is reasonably possible, be delivered to the comptroller in electronic form or using electronic communications, even where the application for the patent is not delivered in electronic form or using electronic communications.

A sequence listing may be set out either in the description or at the end of the application, but if set out at the end of the application rule 12(4) shall not apply.

The contents of all documents (including annotations to drawings) contained in an application for a patent must be in English or Welsh.

The requirements for the documents contained in an application for a patent (other than drawings) are set out in Parts 1 and 2 of Schedule 2.

The requirements for a drawing contained in an application are set out in Parts 1 and 3 of that Schedule.

All documents contained in an application (including drawings) must comply with the requirements set out in Part 4 of that Schedule.

Paragraphs (2) and (3) do not apply to an application, or a sequence listing contained in an application, which is delivered in electronic form or using electronic communications.

The abstract must start with a title for the invention.

The abstract must contain a concise summary of the matter contained in the specification.

Where the specification contains more than one drawing, the abstract must include an indication of the drawing which should accompany the abstract when it is published.

Where it appears to the comptroller that a drawing included in the specification better characterises the invention he shall publish it with the abstract.

Where a feature of the invention included in the abstract is illustrated in a drawing, the feature must be followed by the reference for that feature used in that drawing.

The abstract must not contain any statement on the merits or value of the invention or its speculative application.

For the purposes of the Act, two or more inventions shall be treated as being so linked as to form a single inventive concept where there exists between those inventions a technical relationship which involves one or more of the same or corresponding special technical features.

In paragraph (1) “special technical features” means those technical features which define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.

Where the application or a copy of the application is available to the comptroller it shall, for the purposes of section 15(10)(b)(ii), be treated as having been filed in accordance with rules.

The period prescribed for the purposes of section 15(5)(b) and (6) is the period beginning with the date of filing of the application for a patent and ending with the date of the preliminary examination.

But where the applicant is notified under section 15A(9) that a drawing or part of the description of the invention has been found to be missing, the period prescribed for the purposes of section 15(5)(b) and (6) shall be the period of two months F12beginning immediately after the date of the notification.

An applicant may only withdraw a missing part by giving written notice to the comptroller.

But paragraph (5)(b) does not apply in respect of an earlier relevant application where that application or a copy of the application is available to the comptroller.

For the purposes of section 15(9), a new application may only be filed in accordance with this rule.

A new application may not be filed if the earlier application has been terminated or withdrawn.

Where there has not been a section 18(4) notification, a new application may be filed before the end of the period ending three months before the compliance date of the earlier application.

Where an earlier application has been the subject of more than one section 18(4) notification, a reference in paragraph (4) to a section 18(4) notification is a reference to the first of those section 18(4) notifications.

A new application must include a statement that it is filed as mentioned in section 15(9).

In this rule “section 18(4) notification” means notification under section 18(4) that the earlier application complies with the Act and these Rules.

The period prescribed for filing a new application under section 8(3) or section 12(6) is the relevant period.

A new application for a patent may be filed under section 37(4) before the end of the relevant period.

But the comptroller may, if he thinks fit, shorten the relevant period after giving the parties such notice and subject to such conditions as the comptroller may direct.

The period prescribed for the purposes of section 15(10)(a) and (b)(i) is the relevant period.

Subject to rules 58(4), 59(3) and 68(3), the period prescribed for the purposes of section 15(10)(c) and (d) and section 17(1) is the relevant period.

The period prescribed for the purpose of section 15(10)(b)(ii) is four months F19beginning immediately after the date of filing of the application.

But paragraphs (1) to (3) do not apply to a new application.

But where the new application is filed less than six months before the compliance date, the period prescribed for the purposes of section 15(10)(a) to (d) and section 17(1) is the period ending with its initiation date.

On the preliminary examination under section 15A of an application the examiner shall determine whether the application complies with the requirements of rules 6 to 9.

The examiner must report to the comptroller his determinations under paragraph (1), and the comptroller must notify the applicant accordingly.

Where the comptroller has notified the applicant under paragraph (1), the applicant must, before the end of the period of two months F26beginning immediately after the date of that notification, provide the comptroller with a corrected date; otherwise the comptroller must disregard the declaration in so far as it relates to the earlier relevant application.

In paragraph (2) “corrected date” means a date that would not have been reported by the examiner under paragraph (1).

Where an application is delivered in electronic form or using electronic communications, only the requirements of rule 14(1) are formal requirements.

Where an international application for a patent (UK) was filed in accordance with the provisions of the Patent Co-operation Treaty, the requirements mentioned in paragraph (1) shall be treated as complied with to the extent that the application complies with any corresponding provision of that Treaty.

Where a person's application under rule 11(1)(a) or (b) has been accepted by the comptroller, the comptroller must ensure that the application for the patent as published does not mention that person's name and address as those of the person believed to be the inventor (or, as the case may be, that person's address as that of the person so believed).

A request under section 17(1)(c)(i) for a search must be made on Patents Form 9A.

The comptroller may, if he thinks fit, send to the applicant a copy of any document (or any part of it) referred to in the examiner's report made under section 17.

Where an examiner conducts a search in relation to the first only of two or more inventions, in accordance with section 17(6), he must report this fact to the comptroller, and the comptroller must notify the applicant accordingly.

The applicant must pay any search fee in relation to those inventions (other than the first) on or before the relevant date.

The relevant date is the first day of the three month period ending with the compliance date of the application.

The fee for a supplementary search under section 17(8), or a search under section 17(6), must be accompanied by Patents Form 9A.

A request under section 18 for a substantive examination of an application must be made on Patents Form 10.

Subject to paragraphs (3) and (4) and rules 60 and 68(4), the period prescribed for the purposes of section 18(1) is six months F28beginning immediately after the date the application was published.

Where the comptroller has given directions under section 22(1) or (2) in relation to information contained in the application, the period prescribed for the purposes of section 18(1) is the relevant period.

Paragraphs (2) and (3) do not apply to a new application.

But where the new application is filed less than six months before the compliance date, the period prescribed for the purposes of section 18(1) is the period ending with its initiation date.

Whenever the examiner reports to the comptroller under either section 18(3) or (4) on whether the application complies with the requirements of the Act and these Rules, the comptroller must send a copy of that report to the applicant.

The comptroller may, if he thinks fit, send to the applicant a copy of any document (or any part of it) referred to in the examiner's report.

The period prescribed for the purposes of sections 18(4) and 20(1) (failure of application) is the compliance period.

Where the first observations report is sent to the applicant during the last three months of the period specified in paragraphs (2) or (3), the compliance period is three months F34beginning immediately after the date on which that report is sent.

A request to amend an application for a patent under section 19(1) must be made in writing.

The conditions prescribed under section 19(1) are as follows.

The applicant may amend his application only within the period beginning with the date on which the applicant is informed of the examiner's report under section 17(5) and ending with the date on which the comptroller sends him the first substantive examination report.

Where the comptroller's consent is required, or the applicant wishes to amend the request for the grant of a patent, the applicant must include the reasons for the amendment.

A request under section 20A for the reinstatement of an application must be made before the end of the relevant period.

The request must be made on Patents Form 14.

Where the comptroller is required to publish a notice under section 20A(5), it must be published in the journal.

The applicant must file evidence in support of that request.

Where that evidence does not accompany the request, the comptroller must specify a period within which the evidence must be filed.

Where, on consideration of that evidence, the comptroller is not satisfied that a case for an order under section 20A has been made out, he must notify the applicant accordingly.

The applicant may, before the end of the period of one month F38beginning immediately after the date of that notification, request to be heard by the comptroller.

Where the applicant requests a hearing, the comptroller must give him an opportunity to be heard, after which the comptroller shall determine whether the request under section 20A shall be allowed or refused.

Where the comptroller reinstates the application after a notice was published under paragraph (4), he must advertise in the journal the fact that he has reinstated the application.

In determining the date on which the removal of the cause of non-compliance occurred, the comptroller shall have regard to any relevant principles applicable under the European Patent Convention.

The comptroller must send to the applicant a copy of any observations on patentability he receives under section 21.

The comptroller may, if he thinks fit, send to the applicant a copy of any document referred to in the observations.

The comptroller must send to an examiner any observations on patentability.

But paragraph (4) does not apply where the observations are received after the examiner has reported under section 18(4) that an application complies with the requirements of the Act and these Rules.

The application must, if it is reasonably possible, be delivered to the comptroller in electronic form or using electronic communications.

The comptroller may, if he thinks fit, direct the proprietor to file a copy of the specification with the amendment applied for marked on it.

Where the specification of a European patent (UK) was published in a language other than English, the proprietor must file a translation into English of the part of the specification which he is applying to amend and a translation of the amendment.

The comptroller may, if he thinks fit, direct the proprietor to file a translation into English of the specification as published.

Where the court or the comptroller allows the proprietor of a patent to amend the specification of the patent, the comptroller may direct him to file an amended specification which complies with the requirements of Schedule 2.

In this rule and in rules 37 to 41—

• “renewal date” has the meaning given in rules 37(2) to (4) and 38(3);

• “renewal fee” means the fee prescribed in respect of a renewal date;

• “renewal period” means the period prescribed by rule 37 or 38 for the payment of a renewal fee.

If the renewal fee is not paid before the end of the renewal period, the patent shall cease to have effect at the end of the renewal date.

Patents Form 12 must be filed before the end of the renewal period.

But where payment is made under section 25(4) or section 28(3), Patents Form 12 must accompany the renewal fee and the prescribed additional fee.

On receipt of the renewal fee the comptroller must issue a certificate of payment.

This rule prescribes the period for the payment of a renewal fee in respect of the first renewal date.

This rule prescribes the period for the payment of a renewal fee in respect of renewal dates subsequent to the first renewal date.

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

This rule applies where the renewal fee has not been received by the end of the renewal period.

The comptroller must, before the end of the period of six weeks beginning immediately after the end of the renewal period, and if the fee remains unpaid, send a renewal notice to the proprietor of the patent.

An application under section 28 for restoration of a patent may be made at any time before the end of the period ending with the thirteenth month after the month in which the period specified in section 25(4) ends.

The application must be made on Patents Form 16.

The notice of the application must be published in the journal.

The applicant must file evidence in support of the application.

If that evidence does not accompany the application, the comptroller must specify a period within which the evidence shall be filed.

If, on consideration of that evidence, the comptroller is not satisfied that a case for an order under section 28 has been made out, he must notify the applicant accordingly.

The applicant may, before the end of the period of one month F41beginning immediately after the date of that notification, request to be heard by the comptroller.

If the applicant requests a hearing, the comptroller must give the applicant an opportunity to be heard before he determines whether to grant or refuse the application under section 28.

Where the comptroller grants the application he must advertise the fact in the journal.

The comptroller must send the notice to the address specified by rule 39(3).

An application under section 46(1) must be made on Patents Form 28.

Where an entry is made in the register to the effect that licences under a patent are to be available as of right, the comptroller must advertise the entry in the journal.

An application under section 47(1) for the cancellation of an entry made under section 46 must be made on Patents Form 30.

The period prescribed for the purposes of section 47(3) is two months F42beginning immediately after the date on which the entry was made under section 46.

But where a person's application under rule 11(1)(a) or (b) has been accepted by the comptroller, the comptroller may omit from the register his name and address (or, as the case may be, his address) as that of the person believed to be the inventor.

A notice of any transaction, instrument or event mentioned in section 32(2)(b) or 33(3) must be entered in the register as soon as practicable after it occurs (or, if later, when the application is published).

The comptroller may, at any time, enter in the register such other particulars as he thinks fit.

An application under section 32(6) for a certified copy of an entry in the register, or a certified extract from the register, must be made on Patents Form 23.

A person may apply on Patents Form 23 for an uncertified copy of an entry in the register or an uncertified extract from the register and, on payment of the prescribed fee, he shall be entitled to such a copy or extract.

The comptroller may direct that such evidence as he may require in connection with the application shall be sent to him within such period as he may specify.

A person may apply to the comptroller for a certified copy of any relevant document and, on payment of the prescribed fee, he shall be entitled to such a copy.

A person may apply to the comptroller for an uncertified copy of any relevant document and, on payment of the prescribed fee, he shall be entitled to such a copy.

An application under paragraph (1) or (2) must be made on Patents Form 23.

A request under paragraph (1)(a) to correct a name must be made on Patents Form 20.

Any other request under paragraph (1) must be made in writing.

If the comptroller has no doubts (or no longer has doubts) about whether he should make the correction, he must enter the correction in the register or make it to the application or document.

For the purposes of this rule a request for a correction includes a correction made for the purposes of section 117.

Subject to rule 49, any person may request the correction of an error in the register or in any document filed at the Patent Office in connection with registration.

If the comptroller has no doubts (or no longer has doubts) about whether an error has been made he shall make such correction as he may agree with the proprietor of the patent (or, as the case may be, the applicant).

For the purposes of section 118(1) the prescribed restrictions are those set out in paragraphs (2) and (3).

In this rule references to a document include part of a document.

Where the circumstances specified in section 118(4) exist, a request under section 118(1) must be accompanied by evidence verifying their existence.

The comptroller must notify the applicant for the patent of any request.

The notification must be accompanied by a copy of the request and the accompanying evidence.

The applicant may, before the end of the period of 14 days F44beginning immediately after the date of the notification, inform the comptroller that the circumstances specified in section 118(4) do not exist; otherwise the comptroller may treat him as accepting that those circumstances exist.

Where a person files a document at the Patent Office or sends it to an examiner or the comptroller, any person may request that the document be treated as a confidential document.

Where a request has been made under paragraph (1), the document must be treated as confidential until the comptroller refuses that request or gives a direction under paragraph (5).

If it appears to the comptroller that there is good reason for the document to remain confidential, he may direct that the document shall be treated as a confidential document; otherwise he must refuse the request made under paragraph (1).

But where the comptroller believes there is no longer a good reason for the direction under paragraph (5) to continue in force, he must revoke it.

In this rule references to a document include part of a document.

Where a person requests to be notified of a relevant event, he must use Patents Form 49.

Where a person has made such a request, the comptroller must notify him that the relevant event has occurred as soon as practicable after the event.

But the comptroller shall not give him information or permit him to inspect a document unless he would be entitled to such information or to inspect such a document under section 118.

A request on Patents Form 49 must be for information regarding a single relevant event only.

The translation must comply with the requirements set out in Parts 1 to 3 of Schedule 2.

The translation and Patents Form 54 must be filed in duplicate.

But paragraph (2) does not apply where a translation is delivered in electronic form or using electronic communications.

Where the specification includes any drawings all annotations in French or German must be replaced with annotations in English.

The period prescribed for the purposes of section 77(6)(a) is three months beginning with the date on which the grant of the patent was mentioned in the European Patent Bulletin.

The period prescribed for the purposes of section 77(6)(b) is three months beginning with the date of publication, by the European Patent Office, of the specification as amended.

No translation may be filed under section 77(6)(a) or (b) before the beginning of the period prescribed for the purposes of that provision.

On a day appointed under section 77(9), section 77(6) and paragraphs (1)(a) and (5) to (8) of this rule shall cease to have effect.

The day appointed for the purpose of paragraph (9) shall be the day of the coming into force of the Agreement on the application of Article 65 of the Convention on the Grant of European Patents made in London on 17th October 2000 M1.

A corrected translation filed under section 80(3) must be accompanied by Patents Form 54.

The corrected translation must comply with the requirements set out in Parts 1 to 3 of Schedule 2.

Where the corrected translation includes any drawings all annotations in French or German must be replaced with annotations in English.

The corrected translation and Patents Form 54 must be filed in duplicate.

But paragraph (2) does not apply where a translation is delivered in electronic form or using electronic communications.

The period prescribed for the purposes of section 80(3) for payment of the prescribed fee is 14 days F46beginning immediately after the day the corrected translation is filed.

The period prescribed for the purposes of section 81(2)(b)(i) is three months F47beginning immediately after the date of the notification mentioned in paragraph (1)(b).

Where a request has been made under section 81(2)(b)(i), the period prescribed for the purposes of sections 13(2), 15(10)(d) and 81(2)(c) is two months F48beginning immediately after the date on which the comptroller received that request.

In paragraph (2) “contracting state” means a country which is a party to the European Patent Convention.

Where a request, transmitted under section 81(2)(b)(ii), has been received by the comptroller, he must notify the applicant accordingly.

Where a request has been transmitted under section 81(2)(b)(ii), the period prescribed for the purposes of sections 13(2), 15(10)(d) and 81(2)(c) is four months F50beginning immediately after the date of that notification.

Where in proceedings before the comptroller a person seeks recognition of a relevant determination, he must furnish to the comptroller a copy of the determination duly certified by the relevant official of the competent authority.

In paragraph (1) “relevant determination” means the determination of a question to which section 82 applies by the competent authority of a relevant contracting state other than the United Kingdom.

The application must be made without notice.

Where fewer than three copies of the application are filed, the comptroller may direct the applicant to pay any copying costs.

Where the Patent Office was acting on behalf of the International Bureau as the receiving Office, the comptroller shall only transmit an international application for a patent filed at the Patent Office to the International Bureau and the International Searching Authority after the appropriate fee has been paid.

A request under the Treaty for a certified copy of an international application for a patent (including any corrections to that application) filed at the Patent Office as the competent receiving Office must be filed on Patents Form 23.

But where the applicant has been notified under rule 69(5), the period prescribed for the purposes of section 89A(3)(a) and (5)(a) is three months F53beginning immediately after the date of the notification.

Where an international application for a patent (UK) has begun the national phase, a request for permission to make a late declaration may be made under section 5(2B) before the end of the period of one month F54beginning immediately after the date the national phase of the application begins.

Paragraph (2) applies where an applicant, on filing an international application for a patent (UK), states in writing to the receiving office that the invention has been displayed at an international exhibition.

The prescribed period for the purposes of section 2(4)(c) is two months F55beginning immediately after the date on which the national phase begins.

This rule applies to an international application for a patent (UK) which has begun the national phase of the application.

Where the applicant expressly requests the comptroller to proceed with the national phase before the end of the period prescribed by rule 66(1), the translation must include the request and abstract.

But paragraph (2) does not apply where a copy of the application, as published in accordance with the Patent Co-operation Treaty, is available to the comptroller.

This rule applies to translations which are necessary for the purposes of section 89A(3) and (5).

Such a translation is necessary for only that part of the application which is in a language other than English.

Where a title has been established for the application by the International Searching Authority, the translation must include that title (and not any title which was included in the application as it was originally filed).

This rule applies to translations of amendments as it applies to translations of applications and accordingly references to “application” shall be construed as references to “amendment”.

The applicant may, before the end of the relevant period, make a written request to the comptroller to give a direction under section 89(5).

The applicant may notify the comptroller that the circumstances mentioned in section 89(3) or rule 72 apply to his application.

Where the applicant has made a request to the comptroller under paragraph (1), the comptroller may direct the applicant to furnish him with any document, information or evidence within such period as the comptroller may specify.

Where the applicant fails, before the end of the period specified, to comply with a direction given under paragraph (5), the comptroller may treat him as having withdrawn his request.

The rules listed in Part 4 of that Schedule apply to any proceedings heard before the comptroller under the Act.

In this Part—

• “claimant” means a person who starts proceedings or is treated as starting proceedings under rule 76(1);

• “defendant” means a person who files a counter-statement under rule 77(6) or (8);

• “statement of case” means the statement of grounds or the counter-statement and references to a statement of case include part of the statement of case;

• “statement of grounds” means a statement filed by the claimant;

• “statement of truth” means a statement that the person making the statement believes that the facts stated in a particular document are true; and

• “witness statement” means a written statement signed by a person that contains the evidence which that person would be allowed to give orally.

The rules in this Part set out a procedural code with the overriding objective of enabling the comptroller to deal with cases justly.

The parties are required to help the comptroller to further the overriding objective.

For the purposes of this rule and rule 77—

• “relevant form” means—

  1. a

     in relation to applications or requests under the provisions of the Medicinal Products Regulation or the Plant Protection Products Regulation mentioned in Part 1 of Schedule 3, Patents Form SP3;

  2. b

     in relation to applications, references or requests under any other provision mentioned in Part 1 of that Schedule, Patents Form 2; and

  3. c

     in relation to oppositions under the provisions mentioned in Part 2 of that Schedule, Patents Form 15; and

• “relevant notice” means the advertisement in the journal mentioned in rule 75.

The comptroller must notify the applicant for, or proprietor of, the patent which is the subject matter of the case that proceedings have started.

In addition, the comptroller may notify any persons who appear to him to be likely to have an interest in the case that proceedings have started.

The comptroller must send the relevant form and the statement of grounds with the notification under paragraph (1) or (2).

In that notification, the comptroller must specify a period within which the persons notified may file a counter-statement.

Any counter-statement must be filed in duplicate before the end of the period specified under paragraph (5).

But paragraphs (5) and (6) do not apply to an opposition under any of the provisions mentioned in Part 3 of Schedule 3.

In such oppositions, any counter-statement must be filed in duplicate before the end of the period of four weeks F63beginning immediately after the date of the relevant notice.

The period prescribed for the purposes of giving notice to the comptroller under section 47(6) of opposition to cancellation of an entry made under section 46 that licences are available as of right is the period prescribed by paragraph (8).

A defendant who fails to deal with an allegation in a counter-statement shall be taken to admit that allegation.

Where a relevant statement refers to any other document, a copy of that document must accompany the relevant statement.

Where more than one copy of a relevant statement is filed, each copy of the statement must be accompanied by a copy of any document referred to in the statement.

In this rule “relevant statement” means a witness statement, statement of case, affidavit or statutory declaration.

If the claimant wishes to continue the proceedings following receipt of the counter-statement, the claimant must file Patents Form 4.

The comptroller may, at any time he thinks fit, give leave to either party to file evidence upon such terms as he thinks fit.

The comptroller must then give the parties an opportunity to be heard.

If any party requests to be heard, the comptroller must send to the parties notice of a date for the hearing.

When the comptroller has decided the matter he must notify all the parties of his decision, including his reasons for making the decision.

The comptroller may extend or shorten (or further extend or shorten) any period of time which has been specified under any provision of this Part.

An extension may be granted under paragraph (1) notwithstanding the period of time specified has expired.

A party may apply to the comptroller for him to strike out a statement of case or to give summary judgment.

Subject to paragraphs (3) and (4), any hearing before the comptroller in proceedings relating to an application for a patent, or a patent, shall be held in public.

Any party to the proceedings may apply to the comptroller for a hearing to be held in private.

For the purposes of this rule a reference to a hearing includes any part of a hearing.

In relation to proceedings in Scotland, references in this rule to costs are references to expenses.

A witness statement or a statement of case may only be given in evidence if it includes a statement of truth.

Evidence is to be by witness statement unless the comptroller directs or any enactment requires otherwise.

A witness statement, affidavit or statutory declaration must comply with the requirements of Part 1 of Schedule 2, unless the comptroller otherwise directs.

Where there is more than one party to proceedings, a party to the proceedings may apply to the comptroller to hold proceedings in Scotland.

A refusal of an application made under paragraph (1) is excepted from the right of appeal conferred by section 97.

The comptroller must notify the proprietor of the patent that an application has been made.

The comptroller must send a copy of the draft licence with the notification.

In the notification, the comptroller must specify a period within which the proprietor may file a statement of grounds.

The proprietor must file a statement of grounds in accordance with rule 76(4); otherwise he shall be treated as supporting the applicant's case.

Proceedings shall continue under this Part as if they had been started under rule 76(1) and for those purposes the proprietor shall be “the claimant” and the applicant shall be “the defendant”.

The period prescribed for the purposes of section 38(3) shall be two months F65beginning immediately after the date on which the order mentioned in section 38(2) was made.

The period prescribed for the purposes of section 40(1) and (2) shall be the period beginning with the date of grant of the patent and ending one year after the patent ceased to have effect.

However, where the requester is acting as an agent in making the request, the persons referred to in paragraph (2)(a) do not include the person for whom the requester is so acting.

The statement shall be accompanied by a copy of any evidence or other document (except a document which has been published by the comptroller or is kept at the Patent Office) which is referred to in the statement.

Each such statement, evidence or other document must be provided in duplicate.

The comptroller shall not issue an opinion if the requester gives him notice in writing that the request is withdrawn.

In addition, the comptroller may notify of the request any persons who appear to him to be likely to have an interest in the question upon which the opinion is sought.

The comptroller must send a copy of the form and statement filed under rule 93(1) to each person so notified, together with a copy of such other documents filed under rule 93 as he thinks fit.

The comptroller must advertise a request in such manner as he thinks fit.

If the request has not been refused or withdrawn, any person may, before the end of the relevant period, file observations on any issue raised by the request.

Such observations may include reasons why the comptroller should refuse the request.

A person to whom observations are sent under paragraph (3) may, during the period of two weeks beginning immediately after the end of the relevant period, file observations confined strictly to matters in reply.

If it is reasonably possible, the observations filed under this rule and the copies of such observations shall be delivered only in electronic form or using electronic communications.

For the purposes of this rule, the relevant period is four weeks F67beginning immediately after the date of advertisement under rule 95(4).

After the end of the procedure under rule 96, the comptroller must refer the request to an examiner for the preparation of the opinion.

The patent holder may, before the end of the period of three months F68beginning immediately after the date on which the opinion is issued, apply to the comptroller for a review of the opinion.

However, such proceedings for a review may not be brought (or if brought may not be continued) if the issue raised by the review has been decided in other relevant proceedings.

The application must be made on Patents Form 2 and be accompanied by a copy and a statement in duplicate setting out the grounds on which the review is sought.

The statement must contain particulars of any relevant proceedings of which the applicant is aware which may be relevant to the question whether the proceedings for a review may be brought or continued.

The comptroller must advertise the application in such manner as he thinks fit.

Before the end of the relevant period, any person may file a statement in support of the application or a counter-statement contesting it (which in either case must be in duplicate), and on so doing shall become a party to the proceedings for a review.

The comptroller shall send to the other parties a copy of each statement or counter-statement filed under paragraph (3).

A decision under paragraph (1)(a) or (b) shall not estop any party to any proceedings from raising any issue regarding the validity or the infringement of the patent.

No appeal under section 97 shall lie from a decision to set aside the opinion under paragraph (1)(a), except where the appeal relates to a part of the opinion that is not set aside.

Where an agent has been authorised under paragraph (1), the comptroller may, in any particular case, require the signature or presence of his principal.

The proprietor of a patent, or any person who has registered any right in or under a patent or application, may furnish an address for service by notifying the comptroller.

Where a person has furnished an address for service under paragraph (1) or (2), he may substitute a new address for service by notifying the comptroller.

An address for service furnished under this Rule shall be an address in the United Kingdom, another EEA state or the Channel Islands.

Where a direction has been given under paragraph (1), the person directed shall, before the end of the period of two months F71beginning immediately after the date of the direction, furnish an address for service.

In this rule an “address for service” means an address which complies with the requirements of rule 103(4) F2....

A request to the comptroller to correct an error or mistake under section 117 must be made in writing and identify the proposed correction.

The comptroller may, if he thinks fit, require the person requesting a correction to produce a copy of the document indicating the correction.

Where the request is to correct a specification of a patent or application, the request shall not be granted unless the correction is obvious (meaning that it is immediately evident that nothing else could have been intended in the original specification).

But paragraph (3) does not apply where the error in the specification of the patent or application is connected to the delivery of the application in electronic form or using electronic communications.

Where the comptroller determines that no person could reasonably object to the correction no advertisement shall be published under rule 75.

Where the comptroller is required to publish a notice under section 117(3), it must be published in the journal.

This rule does not apply to a correction of a name, address or address for service (which may be corrected under rule 49).

A person may apply to the comptroller for the remission of a fee.

The comptroller may remit the whole or part of the fee payable in respect of a request for an opinion under section 74A where he has refused the request.

Where a supplementary protection certificate lapses or is declared invalid, the comptroller must remit any fee which has been paid in respect of the relevant period.

Any decision of the comptroller under this rule is excepted from the right of appeal conferred by section 97.

Subject to paragraph (3), the comptroller may, if he thinks fit, authorise the rectification of any irregularity of procedure connected with any proceeding or other matter before the comptroller, an examiner or the Patent Office.

The comptroller may, if he thinks fit, extend or further extend any period of time prescribed by these Rules except a period prescribed by the provisions listed in Parts 1 and 2 of Schedule 4.

An extension may be granted under paragraph (1) or (3) notwithstanding the period of time prescribed by the relevant rule has expired.

But no extension may be granted in relation to the periods of time prescribed by the rules listed in Part 3 of Schedule 4 after the end of the period of two months beginning immediately after the period of time as prescribed (or previously extended) has expired.

The period prescribed for the purposes of section 117B(3) is two months beginning immediately after the expiry of the period to which section 117B(2) applies.

Any certificate of the comptroller given under paragraph (1) shall be displayed in the Patent Office and advertised in the journal.

The comptroller shall, where the time for doing anything under the Act expires on an interrupted day, extend that time to the next following day not being an interrupted day (or an excluded day).

In this rule—

• “excluded day” means a day specified as an excluded day in directions given under section 120; and

• “interrupted day” means a day which has been certified as such under paragraph (1).

The comptroller shall extend any period of time specified in the Act or these Rules where he is satisfied that the failure to do something under the Act or these Rules was wholly or mainly attributable to a delay in, or failure of, a communication service.

In this rule “communication service” means a service by which documents may be sent and delivered and includes post, electronic communications, and courier.

This rule applies where an applicant is not required to file a copy of an application at the Patent Office because that application or a copy of that application is available to the comptroller.

Where this rule applies the comptroller shall make a copy (or further copy) of that application and certify it accordingly.

Where any document filed at the Patent Office, or sent to the comptroller, is in a language other than English or Welsh it must be accompanied by a translation into English of that document.

Where more than one copy of the document mentioned in paragraph (1) is filed or sent, a corresponding number of translations shall accompany it.

Where a document to which paragraph (1) applies is not accompanied by a translation, the comptroller may, if he thinks fit, take no further action in relation to that document.

Where a direction is given under paragraph (5) a translation of that document must be filed before the end of the period of two months F73beginning immediately after the date on which the direction is given; otherwise the comptroller may, if he thinks fit, take no further action in relation to the application.

Subject to rule 82(1)(b), where a patent application or any document related to such application is filed at the Patent Office or sent to the comptroller in Welsh, and is not accompanied by a translation into English, the comptroller must obtain such a translation.

In this rule a reference to a document includes a reference to a part of a document; and in paragraph (5) “International Preliminary Examination Report”, “International Preliminary Report on Patentability” and “International Search Report” and have the same meaning as in rule 64.

Where, in the course of such proceedings, leave is given to amend the specification of the patent, the proprietor shall file at the Patent Office a translation of the amendment into the language in which the specification of the patent was published.

This rule applies to making a request for an opinion under section 74A as it applies to proceedings started before the comptroller.

The prescribed fee must be accompanied by Patents Form SP2; and once the certificate has taken effect no further fee may be paid to extend the term of the certificate unless an application for an extension of the duration of the certificate is made under the Medicinal Products Regulation.

Where the prescribed fee is not paid before the end of the period prescribed for the purposes of paragraph 5(a) of Schedule 4A to the Act, the comptroller shall, before the end of the period of six weeks beginning immediately after the end of that prescribed period, and if the fee remains unpaid, send a notice to the applicant for the certificate.

Schedule 5 (transitional provisions) shall have effect.

The instruments set out in Schedule 6 (revocations) shall be revoked to the extent specified.