Explanatory Note
(This note is not part of the Rules)
These Rules are made under the Patents Act 1977 (c. 37) (“the Act”). They regulate applications for patents and other procedures before the Patent Office in relation to patents. These Rules make substantial changes to both the drafting and effect of the Patents Rules 1995 (SI 1995/2093) which are revoked together with the other instruments listed in Schedule 6 to these Rules.
Part 1 of these Rules includes the commencement and general interpretation provisions.
Part 2 of these Rules includes the provisions relating to applications for patents. In particular, Part 2 includes provisions on international exhibitions (the Convention on International Exhibitions signed in Paris on 22nd November 1928 is published in Cmnd 3776 Treaty Series 9/1931 and is available on the website of the Foreign and Commonwealth Office), declarations of priority, mention of the inventor, the form and content of applications, publication of the application, preliminary examination, search and substantive examination. It also includes special provisions on new applications filed under section 8(3), 12(6) or 37(4) or as mentioned in section 15(9) of the Act.
Part 3 of these Rules includes the provisions relating to granted patents. In particular, this Part includes the provisions on the certificate of grant, renewal of the patent and surrender.
Part 4 of these Rules includes the provisions relating to the register and other information. In particular, it sets out the information which must appear on the register and the conditions for inspecting documents under section 118 of the Act. Also rule 54 makes provision for persons to be notified of certain relevant events.
Part 5 of these Rules includes the provisions relating to European patents (UK). In particular, it includes the translation requirements, the procedure for making a conversion request and certain rules relating to the United Kingdom's obligations under the European Patent Convention made in Munich on 5th October 1973 (published in Cmnd 8510 Treaty Series 16/1982 and also available on the website of the European Patent Organisation).
In particular, rule 56(9) and (10) implement Article 1(1) 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. This is known as the London Agreement and is published in Cm 5247 Miscellaneous Series No. 9 (2001) and the day the Agreement comes into force will be published by the Patent Office. Rule 56(9) and (10) replaces the Patents (Translations) Rules 2005 (SI 2005/687).
Part 6 of these Rules includes the provisions relating to international applications for a patent (UK). These are made under the Patent Co-operation Treaty signed at Washington on 19th June 1970 (published in Cmnd 7340 Treaty Series 78/1978 and also available on the website of the World Intellectual Property Organisation (WIPO)). Part 6 of these Rules makes provisions for translations and beginning the national phase, and (for the purposes of these applications) alters periods prescribed elsewhere in the Rules.
Part 7 of these Rules includes provisions governing proceedings heard before the comptroller. In particular rule 74 creates an overriding objective for such proceedings. Rule 76 sets out how a person starts proceedings, and rules 77 and 78 govern how other persons may join those proceedings. Subsequent rules set out requirements for, and powers of the comptroller in relation to, the giving of evidence and the management of proceedings.
Part 8 of these Rules includes provisions on opinions on validity or infringement under section 74A of the 1977 Act. It also sets out the procedure for reviewing such opinions.
Part 9 of these Rules includes miscellaneous provisions, including those on agents, corrections, address for service, translations, extension of periods of time, supplementary protection certificates and publication of documents.
Schedule 1 makes provision for the deposit of biological material. This gives effect to the Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for the purposes of Patent Procedure signed at Budapest on 28th April 1977, as amended on 26th September 1980 (published in Cmnd 8136 Treaty Series 5/1981 and available on the WIPO website).
Schedule 2 contains formal and other requirements.
Schedule 3 contains a list of applications, references, requests and oppositions to which Part 7 applies. It also lists those rules in Part 7 which apply to any proceedings before the comptroller and those rules in Part 7 which apply to proceedings for a review of an opinion.
Part 1 of Schedule 3 includes applications that may be under Community legislation in relation to EU compulsory licences and supplementary protection certificates. The European Parliament and Council adopted Regulation (EC) No 816/2006 of 17 May 2006 on compulsory licensing of patents relating to the manufacture of pharmaceutical products for export to countries with public health problems (OJ No L 157, 9.6.2006, p1). The European Parliament and Council also adopted Regulation (EC) No 1901/2006 of 12 December 2006 on medicinal products for paediatric use (OJ No L 378, 27.12.2006, p1). This amends, among other Community instruments, Council Regulation (EEC) No 1768/92 of 18 June 1992 concerning the creation of a supplementary protection certificate for medicinal products (OJ No L 182, 2.7.92, p1). Provision is also made in relation to Regulation (EC) No 1610/96 of the European Parliament and of the Council of 23 July 1996 concerning the creation of a supplementary protection certificate for plant protection products (OJ No L 198, 8.8.96, p30).
Schedule 4 relates to the extension of time limits.
Schedule 5 contains transitional provisions.
An impact assessment has been prepared and copies placed in the libraries of both Houses of Parliament. Copies are also available from Patents Legal Section, Concept House, Cardiff Road, Newport NP10 8QQ.