The Patents Rules 2007

New applications U.K.

[F1 New applications filed as mentioned in section 15(9) U.K.

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

(2) A new application may not be filed if the earlier application has been terminated or withdrawn.

(3) 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.

(4) Where there has been a section 18(4) notification, a new application may be filed if—

(a) the earlier application has not, prior to the date of the section 18(4) notification, been the subject of an examiner’s report [F2 under section 18] which states that the earlier application does not comply with the Act and these Rules; and

(b) the period of two months beginning immediately after the date of the section 18(4) notification has not expired.

(5) 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.

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

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

Textual Amendments

F1 Rule 19 substituted (6.4.2014) by The Patents (Amendment) Rules 2014 (S.I. 2014/578), rules 1, 2(2)

F2 Words in rule 19(4)(a) inserted (1.10.2014) by The Patents (Amendment) (No. 2) Rules 2014 (S.I. 2014/2401), rules 1, 3

New applications under sections 8(3), 12(6) and 37(4) U.K.

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

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

(3) For the purposes of this rule the relevant period is—

(a) where the comptroller's decision to make an order under those provisions is not appealed, three months [F3 beginning immediately after] the date on which the order was made; or

(b) where that decision is appealed, three months [F4 beginning immediately after] the date on which the appeal was finally disposed of.

(4) 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.

Textual Amendments

F3 Words in rule 20(3)(a) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)

F4 Words in rule 20(3)(b) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)

Extensions for new applications U.K.

21.—(1) Where a new application is filed—

(a) the period prescribed for the purposes of section 13(2) is—

(i) two months [F5 beginning immediately after] its initiation date, or

(ii) if it expires later, the period prescribed by rule 10(3); and

(b) the relevant period for the purposes of rule 8 is—

(i) two months [F6 beginning immediately after] its initiation date, or

(ii) if it expires later, the period specified in rule 8(5),

and the reference in rule 10(3) to the date of filing of the application is a reference to the date of filing of the earlier application.

(2) But where the new application is filed less than six months before the compliance date—

(a) the period prescribed for the purposes of section 13(2) is the period ending with its initiation date; and

(b) the relevant period for the purposes of rule 8 is the period ending with its initiation date.

(3) The second requirement in Schedule 1 must be complied with—

(a) on the initiation date; or

(b) if it expires later, before the end of the relevant period specified in paragraph 3(3) of that Schedule.

Textual Amendments

F5 Words in rule 21(1)(a)(i) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)

F6 Words in rule 21(1)(b)(i) substituted (1.10.2011) by The Patents (Amendment) Rules 2011 (S.I. 2011/2052), rules 1, 3, Sch. (with rule 4)