The Patents (Amendment) (No. 2) Rules 2014

EXPLANATORY NOTE

(This note is not part of the Rules)

These Rules amend the Patents Rules 2007.

Rule 3 amends rule 19(4)(a) of the Patents Rules 2007 to clarify that the only type of examiner’s report that is relevant to the conditions which determine the deadline for filing a new application for a patent as mentioned in section 15(9) of the Patents Act 1977(1) is an examiner’s report made under section 18 of the Patents Act 1977.

Rules 4, 5 and 6 amend parts of the Patents Rules 2007 which support the operation of sections 25(3), 25(4), 25(5) and 28 of the Patents Act 1977(2) in respect of the consequences of a failure to pay patent renewal fees and the restoration of lapsed patents. This is to ensure that those sections function in respect of renewal fees due by virtue of section 77(5A) of the Patents Act 1977 in respect of a European patent (UK) which has been revoked but subsequently restored under the European Patent Convention(3).

Rule 7 introduces a rule which sets out the period in which unpaid renewal fees are payable in respect of a European patent (UK) which has been revoked but subsequently restored for the purposes of section 77(5A) of the Patents Act 1977.

Rule 8 amends the Patents Rules 2007 to provide that the period of time introduced by rule 7 cannot be extended under rule 108 of the Patents Rules 2007.

Rule 9 amends rule 44(5)(a) of the Patents Rules 2007 to update the cross-reference to section 74A of the Patents Act 1977 given the prospective amendment of section 74A by section 16(1) of the Intellectual Property Act 2014. Rule 44(5)(a) of the Patents Rules 2007 requires the comptroller to enter a note on the register of patents that a request for an opinion has been received under section 74A(1) of the Patents Act 1977.

Rule 10 introduces a new rule which sets out the matters in relation to a patent or a supplementary protection certificate about which a person may request the comptroller to issue an opinion under section 74A(1) of the Patents Act 1977. The matters include infringement and aspects of validity.

A full impact assessment in respect of the effect that the changes to the patent opinions service will have on the costs of business, the voluntary sector and the public sector was completed in preparation for the Intellectual Property Bill (now the Intellectual Property Act 2014) and is available from the Intellectual Property Office, Concept House, Cardiff Road, Newport, South Wales, NP10 8QQ and is published with the Explanatory Memorandum alongside this instrument on www.legislation.gov.uk.

A full impact assessment has not been produced for the other elements of this instrument as no, or no significant, impact on the private, voluntary or public sectors is foreseen.

(1)

1977 c.37; section 15(9) was substituted by S.I. 2004/2357.

(2)

1977 c.37; section 25(3) was substituted by section 8(1) of the Patents Act 2004 (c.16), section 25(4) was amended by section 8(2) of the Patents Act 2004 and section 28 was amended by the Copyright, Designs and Patents Act 1988 (c.48), Schedule 5, paragraph 6 and Schedule 8, section 8(3) of the Patents Act 2004 and S.I. 2004/2357.

(3)

The European Patent Convention was made in Munich on 5th October 1973 and revised on 17th December 1991 and 29th November 2000, is published in Cmnd 8510 Treaty Series 016/1982 (with the revisions published in Cm 1953 Miscellaneous Series 007/1992 and Cm 5615 Miscellaneous Series 018/2002) and is available on the European Patent Office’s website. Cm 1953 Miscellaneous Series 007/1992 is out of print but copies are available from The British Library, 96 Euston Road, London, NW1 2DB.