Statutory Instruments
2014 No. 2401
Patents
The Patents (Amendment) (No. 2) Rules 2014
Made
8th September 2014
Laid before Parliament
9th September 2014
Coming into force
1st October 2014
The Secretary of State makes the following Rules in exercise of the powers conferred by sections 25(3), 25(5), 32, 74A, 77(5A) and 123 of the Patents Act 1977( 1 ).
Citation and commencement
1. These Rules may be cited as the Patents (Amendment) (No. 2) Rules 2014 and come into force on 1st October 2014.
Amendments to the Patents Rules 2007
2. The PatentsRules 2007( 2 ) are amended as follows.
New applications governed by rule 19
3. In rule 19(4)(a), after “report”, insert “under section 18( 3 )”.
Payment of fees under section 77(5A) of the Patents Act 1977 following restoration of a European patent (UK)
4. In rule 36(1), in the definition of “renewal period”, after “payment of a renewal fee”, insert “unless a renewal fee is payable by virtue of section 77(5A), in which case in this rule and in rules 39 and 41 “ renewal period ” means the period in which the fee is payable under section 77(5A) and rule 41A”.
5. In rule 36(2), for “effect at the end of the renewal date.”, substitute—
“ effect—
(a) where the renewal fee is payable by virtue of section 77(5A), at the end of the final day of the renewal period;
(b) in any other case, at the end of the renewal date. ”
6. For rule 39(2), substitute—
“ (2) If the renewal fee remains unpaid, the comptroller ( 4 ) must send a renewal notice to the proprietor of the patent—
(a) where the renewal fee is payable by virtue of section 77(5A), before the end of the period of six weeks beginning immediately after the later of—
(i) the end of the renewal period, and
(ii) the date on which the comptroller receives notification of the restoration of the patent from the European Patent Office ( 5 ) ;
(b) in any other case, before the end of the period of six weeks beginning immediately after the end of the renewal period. ”
7. After rule 41, insert—
“ Payment of fees under section 77(5A) following restoration of a European patent (UK)
41A. The prescribed period for the purposes of section 77(5A) is two months. ”
8. In Schedule 4, Part 1, after the entry in respect of rule 40(1), insert the following entry—
“ rule 41A (payment of fees under section 77(5A) following restoration of a European patent (UK) ( 6 ) ) ” .
Opinions on prescribed matters
9. In rule 44(5)(a), omit “(a) or (b)”.
10. After rule 93(5), insert—
“ (6) The prescribed matters for the purposes of section 74A(1) are as follows—
(a) whether a particular act constitutes, or (if done) would constitute, an infringement of the patent;
(b) whether, or to what extent, an invention for which the patent has been granted is not a patentable invention ( 7 ) ;
(c) whether the specification of the patent discloses the invention clearly enough and completely enough for it to be performed by a person skilled in the art;
(d) whether the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent as filed or, if the patent was granted on a new application, in the earlier application as filed;
(e) whether the protection conferred by the patent has been extended by an amendment which should not have been allowed;
(f) whether a supplementary protection certificate ( 8 ) is invalid under Article 15 of the Medicinal Products Regulation ( 9 ) ; and
(g) whether a supplementary protection certificate is invalid under Article 15 of the Plant Protection Products Regulation ( 10 ) . ”
Baroness Neville-Rolfe
Parliamentary Under Secretary of State for Business, Innovation and Skills
Department for Business, Innovation and Skills
8th September 2014
1977 c.37 ; section 25(3) was substituted by section 8(1) of the Patents Act 2004 (c.16) , section 32 was substituted by the Patents, Designs and Marks Act 1986 (c.39) , Schedule 1, paragraph 4 and amended by section 13(3) of the Patents Act 2004 (there are other amendments to section 32 but none is relevant), section 74A was inserted by section 13(1) of the Patents Act 2004 and is prospectively amended by section 16(1) of the Intellectual Property Act 2014 (c.18) , and section 77(5A) is prospectively inserted by the Intellectual Property Act 2014, Schedule, paragraph 6. See section 123(1) for the definitions of “prescribed” and “rules”; there are amendments to section 123 which are not relevant to these Rules.
S.I. 2007/3291 , amended by S.I. 2014/578 ; there are other amending instruments but none is relevant.
Section 18 of the Patents Act 1977 was amended by the Copyright, Designs and Patents Act 1988 (c.48) , Schedule 5, paragraph 4 and S.I. 2004/2357 .
See section 130(1) of the Patents Act 1977 for the definition of “ comptroller ” (there are amendments to section 130(1) which are not relevant to that term).
See section 130(1) of the Patents Act 1977 for the definition of “ European Patent Office ” (there are amendments to section 130(1) which are not relevant to that term).
See section 130(1) of the Patents Act 1977 for the definition of “ European patent (UK) ” (there are amendments to section 130(1) which are not relevant to that term).
See section 1(1) of the Patents Act 1977 for the meaning of “ patentable invention ” (section 1(1) was amended by the Patents Act 2004, Schedule 2, paragraphs 1 and 2).
See section 128B(2) of the Patents Act 1977 for the definition of “ supplementary protection certificate ” (section 128B was inserted by S.I. 2007/3293 ).
See paragraphs 6(2) and 7(a) of Schedule 4A to the Patents Act 1977 for the meaning of “ the Medicinal Products Regulation ” (Schedule 4A was inserted by S.I. 2007/3293 ).
See paragraphs 6(2) and 7(b) of Schedule 4A to the Patents Act 1977 for the meaning of “ the Plant Protection Products Regulation ” (Schedule 4A was inserted by S.I. 2007/3293 ).
1977 c.37 ; section 15(9) was substituted by S.I. 2004/2357 .
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 .
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.