Citation and commencement

1. —(1) These Rules may be cited as the Patents (Amendment) (No. 2) Rules 2016.

(2) This rule and rules 2, 3(a), 3(c) to 8, 10 to 16 and 18 come into force on 1st October 2016 and rules 3(b), 9 and 17 come into force on 6th April 2017.

Amendments to the Patents Rules 2007

2. The PatentsRules 2007( 2 ) are amended as follows.

Applications for the grant of patents under sections 14 and 15

3. In rule 12—

(a) in paragraph (4)(c) after “drawing” insert “or photograph”,

(b) after paragraph (6) insert—

“ (6A) The claim or claims must not rely in respect of the technical features of the invention on references to the description or any drawing or photograph unless the feature cannot otherwise be clearly and concisely defined in words, by a mathematical or chemical formula or by any other written means. ” ; and

(c) in paragraph (7) after the first reference to “drawings” insert “or photographs” and after the second reference insert “and photographs”.

Size and presentation of application

4. In rule 14—

(a) in paragraphs (1), (2) and (4) after “drawings” insert “and photographs”, and

(b) in paragraph (3) after “drawing” insert “and a photograph”.

The abstract

5. In rule 15, in paragraphs (4), (5) and (6), after “drawing” in each place where it occurs insert “or photograph”.

New applications

6. For rule 19, substitute—

“ New applications filed as mentioned in section 15(9)

19. —(1) For the purposes of section 15(9) ( 3 ) a new application may only be filed in accordance with this rule.

(2) A new application may be filed as mentioned in section 15(9) if—

(a) the earlier application ( 4 ) has not been terminated or withdrawn; and

(b) the period ending three months before the compliance date ( 5 ) of the earlier application has not expired.

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

Amendment of application before grant

7. At the beginning of rule 31(3) insert “Subject to rule 66A”.

Reinstatement of applications under section 20A

8. In rule 32—

(a) for paragraph (2) substitute—

“ (2) For this purpose the relevant period is twelve months beginning immediately after the date on which the application was terminated. ” ; and

(b) omit paragraph (11).

Renewal notice

9. In rule 39, for paragraph (3)(a) substitute—

“ (a) the last address specified by the proprietor on payment of a renewal fee (or to another address that has since been notified to him for that purpose by the proprietor); or ” .

Correction or change of name or address; correction of address for service

10. In rule 49—

(a) for the heading substitute “Correction or change of name or address; correction of address for service”; and

(b) for paragraph (6) substitute—

“ (6) For the purposes of this rule a request for a correction includes—

(a) a correction made for the purposes of section 117 ( 6 ) ; and

(b) a change to any of the matters listed in paragraph (1)(a) or (b) in respect of an entry recorded in the register or made to any application or other document filed at the Patent Office. ”

Filing of international applications at the Patent Office

11. In rule 65—

(a) in paragraph (1), for the words from “be filed” to the end, substitute “be filed in English or Welsh.”; and

(b) omit paragraph (2).

International applications

12. After rule 66 insert—

“ Amendment of international application before grant

66A. —(1) This rule applies to an international application for a patent ( UK ) ( 7 ) which has begun the national phase of the application ( 8 ) .

(2) The period within which an applicant may amend his application under section 19(1) is as follows.

(3) Where during the international phase of the application ( 9 ) , the International Searching Authority ( 10 ) has sent to the applicant the International Search Report ( 11 ) relating to the invention, the period within which the applicant may amend his application is the period beginning with the date on which the national phase of the application begins and ending with the date on which the comptroller sends the applicant the first substantive examination report.

(4) Where during the international phase of the application, the International Searching Authority has not sent to the applicant the International Search Report relating to the invention, the period during which the applicant may amend his application is the first to commence of—

(a) the period prescribed by rule 31(3); and

(b) the period beginning with the date on which the International Searching Authority sends the International Search Report to the applicant and ending with the date on which the comptroller sends the applicant the first substantive examination report. ”

Publication of notices

13. For rule 75 substitute—

“ Publication of notices

75. —(1) Subject to paragraph (2) and rule 105(5) the comptroller must advertise in the journal ( 12 ) any event to which it is possible to object under any of the provisions mentioned in Part 2 or 3 of Schedule 3.

(2) Where an amendment to the specification of a patent is proposed by the proprietor under section 75(1) ( 13 ) the comptroller may, if he thinks fit, advertise in the journal the proposed amendment. ” .

Agents

14. In rule 101(1)(b) omit “in duplicate”.

Requirements of documents contained in an application

15. —(1) Schedule 2 is amended as follows.

(2) In the heading to Part 2 and to Part 3, after “Drawings” insert “and Photographs” .

(3) In Part 3—

(a) in paragraphs 11, 18, 19 and 20 after “drawing” insert “or photograph”,

(b) in paragraphs 12, 13 and 14 after “drawings” insert “ or photographs”,

(c) omit paragraph 15 and substitute—

“ 15. Drawings must comprise black lines and may be shaded where the shading assists in representing the shape of a thing provided that it does not obscure other elements of the drawing. ” ; and

(d) after paragraph 20 insert—

“ 20A. Photographs must be black and white, clear and capable of direct reproduction. ” .

(4) In Part 4, in paragraph 21 after “drawing” insert “or photograph”.

Period for furnishing an address for service

16. In Schedule 4—

(a) in Part 1, omit the entry in respect of rule 104(2); and

(b) in Parts 2 and 3, after each entry in respect of rule 68, insert the following entry—

“ rule 104(2) (period for furnishing an address for service), in relation to an application for a patent ” .

Transitional Provision

17. —(1) The amendment made by rule 3(b) does not apply to an application for a patent in respect of which the compliance period expired before 6th April 2017.

(2) In paragraph (1) “compliance period” has the same meaning as it has in rule 2(1) of the PatentsRules 2007.

Review

18. —(1) The Secretary of State must from time to time—

(a) carry out a review of these Rules,

(b) set out the conclusions of the review in a report, and

(c) publish the report.

(2) The report must in particular—

(a) set out the objectives intended to be achieved by the regulatory system established by these Rules,

(b) assess the extent to which those objectives are achieved, and

(c) assess whether those objectives remain appropriate and, if so, the extent to which they could be achieved with a system that imposes less regulation.

(3) The first report under this rule must be published before the end of the period of five years beginning with the day on which rule 9 comes into force.

(4) Reports under this rule are afterwards to be published at intervals not exceeding five years.