Section 123: Rules
Section last updated: October 2016.
|The Secretary of State may make such rules as he thinks expedient for regulating the business of the Patent Office in relation to patents and applications for patents (including European patents, applications for European patents and international applications for patents) and for regulating all matters placed by this Act under the direction or control of the comptroller; and in this Act, except so far as the context otherwise requires, prescribed” means prescribed by rules and “rules” means rules made under this section.|
This gives a general power to the Secretary of State to make rules under the Act, see 0.03 in the “Introduction” section of this Manual. Although s.123(2), (6) and (7) refer to rules for specific purposes, the rule-making power is not limited to those purposes. The rules are applicable to business and other matters arising under the 1977 Act and also govern the business of the Office in relation to European patents, applications for European patents and international applications for patents (rr.58 to 72 being specific to such patents or applications but many others of the rules are also relevant). There are six schedules to the rules, see 0.04 in the Introduction to this Manual.
The Rules thus have the force of statute and where the applicant fails to comply with them the comptroller has power to refuse grant. However, the Rules are subordinate to the Act from which they derive their authority. The Rules therefore must be read together with the Act and cannot override express provisions in the Act.
Reg 4(1) of the Patents (Supplementary Protection Certificate for Medicinal Products) Regulations states that for the purposes of s.123(1) matters relating to supplementary protection certificates shall be the business of the Office. Reg 4(2) provides that the power of the Secretary of State to make rules under s.123 shall include the power to make rules in respect of such certificates and applications for said certificates and that ss.123(2)-(7) and 124 shall apply accordingly. The Patents Rules 2007 and the Patents (Fees) Rules 2007 therefore include specific provisions for supplementary protection certificates. See the “Supplementary Protection Certificates” section of this Manual for further details.
S.123 (except for sub-sections (6) and (7)) is merely an enabling section allowing the making of rules; it does not follow that a rule must have been made providing for any particular contingency. In Tokan Kogyo KK’s Application  RPC 244 it was held that even if it were accepted that s.123(2)(b) see 123.06 to 123.10.2 contemplates the making of rules authorising the rectification of errors and omissions on the part of applicants or their agents, the plain fact is that the only rule relating to correction of irregularities in procedure is r.107, the proviso to which mentions errors and omissions on the part of only the Office.
|Without prejudice to the generality of subsection (1) above, rules may make provision -
(a) prescribing the form and contents of applications for patents and other documents which may be filed at the Patent Office and requiring copies to be furnished of any such documents;
Form and contents of documents
The form and presentation of documents forming a 1977 Act application are governed by the rules, especially rules 12 and 14 (together with Schedule 2), see 14.26 to 14.57, and rule 15 with regard to the abstract, see 14.169 to 14.189 . Information concerning biological material should, where applicable, be included in the application in accordance with rule 13 and Schedule 1, see chapter on s.125A. Rules 76(4), 78(1) and 87 govern the form of statements of case (as defined in r.73(3)) and evidence filed at the Office. The content and layout of the Patents Forms is set out by directions made under section 123(2A) (see.123.70.1). Requirements with regard to translations of European patents (UK) and applications therefore are given in rules 56 and 57. A number of the rules require that certain documents should be filed in duplicate.
[Documents produced on machines which use thermal paper, eg some facsimile (“fax”) or ordinary computer output, may fade within months if not correctly stored. Such material can be recognised by the waxy feel of the paper and the slightly blurred image. Any such documents received by staff should be photocopied as soon as possible after receipt, and both the thermal print and the photocopy should be placed on file. ]
|(b) regulating the procedure to be followed in connection with any proceeding or other matter before the comptroller or the Patent Office and authorising the rectification of irregularities of procedure; Proceedings before the comptroller: procedure|
Part 7 of the Patents Rules 2007 (see particularly rules 73-88) provides a general procedural code for the conduct of proceedings heard before the comptroller. It applies to the applications, requests and references mentioned in Part 1 of Schedule 3 to the Rules and to the oppositions mentioned in Part 2 of that schedule (which start proceedings), including proceedings already started when the Rules entered into force on 17 December 2007. The procedure is explained in outline below, but a more detailed explanation of how it applies in practice is given in Tribunal Practice Notice 6/2007 (which is reprinted in the “Relevant Official Notices and Directions” section of this Manual) and in the Patent Hearings Manual and Litigation Manual. Any requirements specific to particular sections are discussed in the chapters relating to such sections. The provision of security for costs or expenses in proceedings before the comptroller is governed by s.107(4) and r.85 (see 107.10).
r.74 is also relevant.
The procedural code of Part 7 has the overriding objective of enabling the comptroller to deal with cases justly. The criteria for this are listed in r.74(2) and are equivalent to those applying to the court under the Civil Procedure Rules. The comptroller is required to seek to give effect to the overriding objective when he exercises any power or interprets any rule in Part 7, and the parties to proceedings are required to help the comptroller to further the overriding objective.
Those rules in part 7 which are listed in Part 4 of Schedule 3 (rr.74, 79, 80(2) to (6), 81, 82, 84 and 87) apply to any proceedings, including ex parte hearings, heard before the comptroller under the Patents Act 1977.
r.75, r.76(2) is also relevant.
In the case of oppositions, Part 7 draws a distinction between those which start proceedings and those (in respect of some provisions in ss. 47 and 52 concerning licences) which arise after proceedings have started. These are listed in Parts 2 and 3 respectively of Schedule 3. Except in the case mentioned in rule 105(5) (a correction under s.117 to which no person could reasonably object), the comptroller must advertise in the journal any event which can give rise to an opposition under any of the provisions in Parts 2 and 3. For Part 2 oppositions, a person has a period of four weeks from the date of the advertisement to start opposition proceedings (see 123.05.4), except in the case of oppositions under s.75(2) to amendment in infringement or revocation proceedings for which the period is two weeks. For Part 3 oppositions, see 123.05.6.
r.44(7), r.76 is also relevant.
A person must start proceedings by filing in duplicate the relevant Patents Form and a statement of grounds, whereupon he becomes a claimant. The relevant form is Form 2 for the applications, requests and references in Part 1 of Schedule 3 (except those relating to supplementary protection certificates for medicinal and plant protection products under Community legislation for which it is Form SP3), or Form 15 for the oppositions in Part 2 of Schedule 3. The fact that such an application, reference, request or opposition has been made is recorded in the register. The statement of grounds must include a concise statement of the facts and grounds on which the claimant relies and specify the remedy which he seeks. In cases involving licences, the statement must, where appropriate, also include the period or terms of the licence which the claimant believes to be reasonable.
r.77 is also relevant.
The comptroller must notify the applicant for, or proprietor of, the patent in suit that proceedings have started, and may also notify any other person who appears to him likely to have an interest in the case. Generally the comptroller will notify any person named in the register of patents or in the statement of grounds and any other person who appears likely on a case-by-case basis to have an interest. The notification must be accompanied by Form 2 and the statement of grounds and must specify a period, which will normally be 6 weeks, for the persons notified to file a counter-statement; the counter-statement must be filed in duplicate before the end of that period. Any notified person who fails to file a counter-statement will be treated as supporting the claimant’s case, but a person who files a counter-statement becomes a defendant in the proceedings.
r.77(7), r.77(8), r.77(10) is also relevant.
This procedure does not apply to the oppositions in Part 3 of Schedule 3 where proceedings have already started and have been advertised in the journal. In these cases, a person has a period of four weeks from the date of the advertisement to file a counter-statement in duplicate to become a defendant in the proceedings.
r78 is also relevant.
A counter-statement must state which of the allegations in the statement of grounds the defendant denies and which of them he admits, and which of the allegations he is unable to admit or deny but which he requires the claimant to prove. If he denies an allegation he must state his reasons for doing so, and, if he intends to put forward a different version of events from that given by the claimant, he must state his own version. If he fails to deal with an allegation he will be taken to admit it, except that where he has set out the nature of his case in relation to the issue to which the allegation is relevant he shall be taken to require the allegation to be proved.
r.76(4), r.78(5) r.87(5) is also relevant
In order to enable them to be used in evidence, a statement of grounds and a counter-statement must be verified by a statement of truth signed by the party or his legal representative.
r.80(1), r.80(3) is also relevant.
As soon as practicable after the defendant has filed a counter-statement the comptroller must send it to the claimant and specify the periods within which the claimant and defendant may file evidence. Evidence shall only be considered to be filed when it has been received by the comptroller and sent to all other parties to the proceedings. (For the form of evidence and the powers of the comptroller to control the evidence and to compel attendance of witnesses and production of documents, see 123.17-18
r.80(4)r.80(5) is also relevant.
After evidence has been filed, the comptroller must give the parties an opportunity to be heard and send notice of a date for the hearing where a party requests to be heard.
In addition to his powers to control evidence under r.82(2) (see 123.17), the comptroller has powers under r.81 to extend or shorten (or further extend or shorten) any period of time specified under the provisions of Part 7 of the Rules; under rule 82(1) to give such directions as to the management of the proceedings as he thinks fit; and, on the application of a party under r.83, to strike out a statement of case or give summary judgment. The power under r.82(1) is general, but the rule lists a number of examples of the directions which may be given. Under r.82(3) the comptroller may make any direction given under the rules in Part 7 subject to conditions and may specify the consequences of failure to comply with the directions or a condition. Hearing officers will use these powers to manage cases actively in order to meet the overriding objective, with the aim of completing proceedings within 12 months of the filing of the counter-statement. Accordingly the hearing officer will review the case after the counter-statement has been filed to assess how it can best be resolved. The hearing officer will set a timetable at the outset for the filing of evidence and the date of the hearing by agreement with (or at least after representations from) the parties. He will normally order the case to follow one of three main routes:
alternative dispute resolution (ADR), for which a period of 2 months should normally suffice
standard procedure, for straightforward cases. In general the hearing officer will expect the hearing to be set for no later than 9 months from the filing of the counter-statement. This will provide a window for ADR if necessary, sufficient time for the filing of three rounds of evidence (evidence in chief from the claimant and the defendant and evidence in reply from the claimant) at 6 week intervals, and then a period of 2-3 months before the hearing
case management conference, usually where the case is complex or the issues do not appear to be clear cut, in order to determine how events should proceed
r84 is also relevant.
The hearing is to be held in public unless either the comptroller has granted an application for the hearing or part of it to be held in private, or it relates to an application for a patent which has not been published. In the former case the comptroller may grant an application where he considers there is good reason for it, and all parties have had an opportunity to be heard on the matter.
r.80(6) is also relevant.
When the comptroller has decided the matter he must notify all the parties of his decision and the reasons for making it. The preparation and issue of decisions, which may be written or oral, is explained in Chapters 5 and 6 of the Patent Hearings Manual.
Rectification of irregularities
The correction of irregularities is governed by rule 107 which reads:
(1) Subject to paragraph (3), the comptroller may, if he thinks fit, authorise the rectification of any irregularity of procedure connected with any proceeding or other matter before the comptroller, an examiner or the Patent Office.
(2) Any rectification made under paragraph (1) shall be made
(a) after giving the parties such notice; and
(b) subject to such conditions, as the comptroller may direct.
(3) A period of time specified in the Act or listed in parts 1 to 3 of Schedule 4 (whether it has already expired or not) may be extended under paragraph (1) if, and only if
(a) the irregularity or prospective irregularity is attributable, wholly or in part, to a default, omission or other error by the comptroller, an examiner or the Patent Office; and
(b) it appears to the comptroller that the irregularity should be rectified.
The comptroller thus has discretion on whether to allow a rectification of an irregularity of procedure under this rule, and to impose terms when exercising this discretion favourably. For example, Coal Industry (Patents) Ltd’s Application ( RPC 57) concerned an application on which, following the filing of amendments, an examination report was prepared in the Office but never issued. The applicants therefore never responded and the application was treated as refused since it failed to comply with the Act and Rules. Since this was attributable to an error in the Office, the hearing officer resuscitated the application under r.100 of the Patents Rules 1995 (equivalent to r.107 of the Patents Rules 2007) but imposed terms similar to those employed in restoration proceedings under s.28 to protect the interests of third parties who may have made preparations to exploit the invention between advertisement of the refusal and the decision to resuscitate. The Patents Court upheld the hearing officer. This can be contrasted with Eveready Battery Co. Inc.’s Patent  RPC 852, in which a renewal fee was correctly paid on a patent, but not recorded in the Office. The patent was therefore erroneously recorded as having ceased. The court held that, since the requirements of the Act and Rules in respect of renewal fee payment had been met, the patent had not ceased and so there was no irregularity to correct. It was therefore not open to the Office to impose third party terms.
[Advertisement of the initiation of proceedings under r.107 may be appropriate in some cases (eg where the case has been previously advertised as terminated); this advertisement will provide a “cut-off” for any third party terms, see also 123.38. ]
In its judgment in Fater’s Application  FSR 647 the Patents Court ruled that the comptroller’s discretionary power under the original Rule 100 [Patents Rules 1978], which by virtue of Rule 124(1)(d) [Patents Rules 1978] applied also to “existing patents and existing applications”, to rectify an irregularity in procedure in or before the Office is not restricted to irregularities attributable to the Office, but extends to irregularities in procedure, however caused, in proceedings of which the Office has seisin. However the House of Lords in E’s Applications  RPC 231 overruled the specific judgment in Fater’s Application that (the original) Rule 100 [Patents Rules 1978] could be used to extend a time limit in a manner not allowed by Rule 110 [Patents Rules 1978], since a general provision of the Rules should not be construed in such a way as to circumvent a specific provision of the Rules. Nevertheless, the proviso, added to Rule 100 [Patents Rules 1978] after the judgment in Fater, and not in point in E’s Applications, enabled the comptroller to extend a time or period specified in the Act or prescribed in the Rules to correct an irregularity in procedure attributable wholly or in part to an error, default or omission on the part of the Office. Paragraph (3) of rule 107 of the Patents Rules 2007 now gives the power to extend a period of time specified in the Act or listed in Parts 1 to 3 of Schedule 4 (whether that period has already expired or not), only if the irregularity or prospective irregularity is attributable, wholly or in part, to a default, omission or other error by the comptroller, an examiner, or the Patent Office and it appears to the comptroller that the irregularity should be rectified. In Alphaplan Ltd’s Application (BL O/127/93), an incorrectly (post)dated cheque was not honoured by the agents’ bank which meant that the application was not entitled to the original date of filing since the filing fee could not be considered to have been paid on that date (see 15.06); the hearing officer held that rectification under Rule 100(1) [Patents Rules 1990] was not possible; however under Rule 100(2) [Patents Rules 1990] he allowed the application to take as its filing date the date by which the Office cashiers should have picked up the error.
According to the judgment of the Court of Appeal in M’s Application  RPC 249 (concerning failure to file Form 10 within the prescribed period) the proviso to rule 100 [Patents Rules 1982] only came into operation if the applicants showed, firstly, that the Office was guilty of an error, default or omission (the “omission” being an omission to do something which it could be said there was some sort of obligation to do), secondly, that such error, default or omission could be said to have contributed to the failure to meet the time limit, and thirdly, that the error, default or omission played an active causative role in the irregularity which had taken place. It did not have to be the sole cause but it had to be something more than a mere causa sine qua non so that it could be said to be a partial cause of the irregularity in the sense of having actively brought it about. In M’s Application the Patent Agents had filed a letter stating that Form 10 was filed therewith but the fact that neither the form nor the fee was enclosed with the letter was not detected until some time later. However, the Court of Appeal held that the Office is not under an obligation to answer routine letters within any particular time limit, so the delay in detecting the defect did not constitute such an “omission” on the part of the Office. The Court also postulated the possibility that a neglect of some well-established and generally well known practice on which it is known or may be assumed that all those dealing with the Office can be said to rely even though it may not be backed up by any statutory or regulatory backing - may constitute an “error or default or omission”, but declined to make a decision to that effect.
In Mills’ Application  RPC 339 the Court of Appeal endorsed the three conditions set out in M’s Application for the applicability of the proviso to rule 100 [Patents Rules 1982] subject to the rider that, with regard to an “omission”, the obligation need not necessarily be of a legally enforceable nature. In Mills, the applicant sought to attribute his failure to file Form 10 in time at least in part to the Office’s failure (which was accepted on the balance of probabilities) to provide a free copy of the printed specification as had been promised in the section 16 publication letter and which, the applicant argued, would have served as a reminder. In overturning the decision in the Patents Court, which relied on the fact that the Office’s failure was not in respect of a statutory requirement, the Court of Appeal held that the applicant could reasonably have expected the Office to fulfil a specific promise given to the Agents in accordance with a well established practice.
Rule 107 may be used to rectify an irregularity where that irregularity was attributable, at least in part, to a reasonable expectation created by well established Office practice. As discussed in 37.20.1, the Hearing Officer in Rigcool Ltd v Optima Solutions UK Ltd BL O/149/11 decided that a “period of two years beginning with the date of the grant” ended the day before the second anniversary of the date of grant. However, in a subsequent decision concerning the same dispute (O/182/11), the Hearing Officer extended this period by one day under r.107, as he accepted that previous Office decisions implied that Office practice was to accept that the period expired on the second anniversary, and not the day before.
Furuno Electric Co. Ltd’s Application (BL O/208/10) concerned the use of r.107 to rescind grant of the patent, and thereby allow a divisional to be filed. In this case it was alleged that a failure by the examiner to raise objections – most significantly to a statement of invention corresponding to a deleted claim – constituted a procedural irregularity. The applicant pointed to passages in this Manual (e.g. at 18.68 and 14.147) concerning inconsistencies between the claims and the description, and said these passages showed that the examiner had made a clearly wrong assessment which should be rectified using r.107. The hearing officer held that the examiner had exercised his judgement in deciding that the claims were clear and that the remaining deficiencies were of a minor nature; whether this judgement was correct or not was a separate question from whether the examiner, having come to that view, followed the correct procedure. Although the applicant disagreed with the examiner’s judgement of the facts, no procedural irregularity had occurred. It was also noted that, while the Manual may be referred to in determining whether a procedural irregularity has occurred, not all the guidance in the Manual can be regarded as procedural; nor can every alleged failure to follow that guidance be regarded as a procedural failing.
Office guidance is regularly updated, particularly when the meaning of statute is clarified by the courts, a hearing officer, or another source. This does not mean that every action the Office made under earlier guidance amounts to an error which contributed to an irregularity of procedure. Cypress Semiconductor Corporation’s Application (BL O/326/16) relates to an application which was reinstated in 2009 following a failure to respond to an examination report. The Office followed its practice at the time and did not provide a new period for compliance. The applicant was not therefore able to amend their application but could only make observations. In 2010 Office practice concerning reinstatement following the failure to respond to an examination report changed to provide an applicant with an opportunity to amend their application. In 2015 the applicant, noticing that the application had not been terminated, argued that, given the change in practice, the period for compliance should be treated as having been extended so that previously proposed amendments could be considered. The hearing officer however held that no new period for compliance could be set, either under the reinstatement provisions of section 20A or under the provisions of rule 107.
[ It is possible to utilise Rule 107 to extend a period of time specified in the Act or listed in Parts 1 to 3 of Schedule 4. However, the power afforded by Rule 107 should not be applied too readily, but rather only in cases where the circumstances warrant it and in accordance with the case-law (referred to above). Whether to exercise discretion must be decided on a case-by-case basis. Therefore, any consideration of exercise of discretion under Rule 107 to extend a period of time should be referred to the Deputy Director of Patents Legal Section or Head of Administration, as appropriate.
[ Whenever a lost or mislaid document comes to light an appropriate minute setting out the circumstances of its discovery should be made. Facts should not be withheld to avoid disclosing someone’s error, since such facts may be of the utmost importance in determining whether or not an irregularity of procedure has occurred to justify exercise of the Comptroller’s discretion should the need subsequently arise.
[ When a mistake is made in the Office, and particularly when it causes inconvenience or extra work for an applicant, an apology for the mistake should be made. If it is felt that the nature or seriousness of the mistake necessitates a fuller explanation or other action then the Deputy Director should be consulted, the matter being referred up if necessary. ]
[Dispensation by comptroller – deleted]
|(c) requiring fees to be paid in connection with any such proceeding or matter or in connection with the provision of any service by the Patent Office and providing for the remission of fees in the prescribed circumstances;|
According to the Patents (Fees) Rules the fees to be paid in respect of any matters arising under the Act shall be those specified in those Rules and the Schedules to those Rules. Those Schedules also give, where appropriate, the number of the corresponding Patents Form to accompany the fee. The fees are periodically revised; the current Patents (Fees) Rules should always be consulted. Where any form specified in the Schedules to the current Patents (Fees) Rules is required to be filed it shall be accompanied by the specified fee (if any) or, where payment may be made within a prescribed period of time after the form has been filed, the specified fee shall be paid within that period. Under the Public Offices Fees (Patents, Designs and Trade Marks) Order 1964, all fees must be paid in money. Cash, money order, postal order, cheque, banker’s draft or credit/debit card are accepted; adhesive stamps are not. Fees may also be paid by authorising debit of funds from a deposit account administered by the Office, or by direct credit to the Office’s account, but in that event a fee is not deemed to have been received until this account is actually credited. Payment for statutory fees is accepted by credit/debit card, but this cannot be used for adding to a deposit account, or for international patent fees (other than the transmittal fee) payable under the PCT.
r.106 is also relevant.
Provision for the remission of fees is made by rule 106. With regard to the remission of fees under rule 106 in the case of a divisional application, see 15.27 and 15.47-49 in the case of requests for an opinion under section 74A, see 74A.04, and in the case of an international application, see 89B.08. There is no appeal from any decision of the comptroller under rule 106.
|(d) regulating the mode of giving evidence in any such proceeding and empowering the comptroller to compel the attendance of witnesses and the discovery of and production of documents;|
r.73(2), r.73(3), r.86, r.87 is also relevant
Under r.80(2) the comptroller may at any time he thinks fit give leave to a party to proceedings before him to file evidence upon such terms as he thinks fit. Under r.82(2), he may give directions (which may be subject to conditions; see r.87 123.05.11) as to the issues on which he requires evidence, the nature of the evidence required and the way in which it is to be placed before him, and he may use these powers of control to exclude evidence which would otherwise be admissible. R.87(1) allows evidence to be given by witness statement, statement of case, affidavit, statutory declaration or any other form which would be admissible in proceedings before the court. It follows from rr.82 and 87 that the comptroller may take oral evidence in lieu of or in addition to written evidence and in particular may allow any witness to be cross-examined on his written evidence. In general however, evidence filed for the purposes of Part 7 of the Rules (Proceedings before the comptroller) is to be given by witness statement unless the comptroller directs or any enactment requires otherwise, a witness statement being defined as a written statement signed by a person and containing evidence which that person would be allowed to give orally. A witness statement or statement of case may only be given in evidence if it includes a statement of truth; for the purposes of Part 7 of the Rules (Proceedings heard before the comptroller), this must be dated and signed by the person making the statement in the case of a witness statement, and in other cases by the party or his legal representative. In relation to the attendance of witnesses and the discovery and production of documents, the comptroller has the powers of a judge of the High Court or (in Scotland) the Court of Session other than the power to punish summarily for contempt of court.
r.79 r.82(1) is also relevant
Under his powers of case management, the comptroller may direct the filing of documents, information or evidence as he thinks fit. Where a “relevant statement” (defined as a witness statement, statement of case, affidavit or statutory declaration) refers to another document, a copy of that document should accompany each copy of the relevant statement that is filed. This does not apply where the relevant statement is sent to the comptroller and the document was published by the comptroller or is kept at the Office. It is desirable as a matter of convenience and practice that objections to the admissibility of evidence should be raised as early as possible but, as was noted in Peckitt’s Application  RPC 337, the fact that an objection was not raised as early as it might have been does not make admissible that which was not admissible. Cross-examination of witnesses and the admission of hearsay evidence, other than in Scotland, under the Registered Designs Act 1949, Patents Act 1977, Copyright, Designs and Patents Act 1988 and Trade Marks Act 1994 are subject to the provisions of the Practice Notice dated 4 January 1999 which appeared in the Patents and Designs Journal No 5727 10 February 1999 and  RPC 294 (reproduced in the “Relevant Official Notices and Directions” section of this Manual).
The mode of giving evidence and related powers of the comptroller are discussed further in Chapter 3 of the Patent Hearings Manual.
|(e) requiring the comptroller to advertise any proposed amendments of patents and any other prescribed matters, including any prescribed steps in any such proceeding;|
Certain matters must be advertised by the comptroller, the necessary advertisements being made in the Patents Journal which the comptroller is required to publish by rule 117, see 123.72. According to rule 117(a), the Journal should inter alia contain particulars of applications for and grants of patents and of other proceedings under the Act.
An application to the comptroller for leave to amend the specification of a patent is advertised in accordance with rule 75.
Certain steps in other proceedings under the Act are advertised in accordance with rules 40(3), 40(9), 43(2), 75 and 105(5)-(7).
In accordance with rule 45, the comptroller may publish or advertise such things done under the Act or Rules in relation to the register as he thinks fit. The Journal includes a list of those patents and published applications in relation to which transactions, instruments or events affecting rights therein or thereunder have been entered in the register, see section 32. See also 123.73.
|(f) requiring the comptroller to hold proceedings in Scotland in such circumstances as may be specified in the rules where there is more than one party to proceedings under section 8, 12, 37, 40(1) or (2), 41(8), 61(3), 71 or 72 above;|
Proceedings in Scotland
r.88(1) r.88(2)is also relevant.
Where there is more than one party to proceedings, any party thereto may apply to the comptroller to hold proceedings in Scotland, in accordance with rule 88(1).
The application will be granted where all the parties consent to holding proceedings in Scotland, or where the comptroller considers it appropriate.
PR part 7 is also relevant.
Rule 88(1) is mentioned in Part 1 of Schedule 3 to the Patents Rules 2007 and the application must therefore be started by filing Form 2 and a statement of grounds in duplicate.
r.88(3) is also relevant
There is no appeal from any decision of the comptroller refusing to grant an application under r.88(1).
See 123.17 with regard to the powers of the comptroller in proceedings in Scotland (rule 86), and Chapter 8 of the Patent Hearings Manual for the conduct of proceedings in Scotland.
|(g) providing for the appointment of advisers to assist the comptroller in any proceeding before him;|
Rule 102 empowers the comptroller to appoint advisers to assist him in any proceeding before him and to settle any question or instructions given to them.
|(h) prescribing time limits for doing anything required to be done in connection with any such proceeding by this Act or the rules and providing for the alteration of any period of time specified in this Act or the rules;|
The Patents Rules 2007 prescribe many periods in connection with the processes for applying for and maintaining patent rights, and for resolving disputes over those rights. Time periods prescribed in the Rules are generally calculated using the “exclusive rule”, meaning that the prescribed period does not include the defining date (for example a period of one month “from 15 April” ends on 15 May). The Patents (Amendment) Rules 2011 (SI 2011/2052), which came into force on 1 October 2011, adjusted the wording used to define various time periods so that there is no doubt that these periods should be calculated using the exclusive rule. See the Practice Notice on time periods for further details.
r.108 is also relevant
Rule 108 of the Patents Rules 2007 reads-
(1) The comptroller may, if he thinks fit, extend or further extend any period of time prescribed by these Rules except a period prescribed by the provisions listed in Parts 1 and 2 of Schedule 4.
(2) The comptroller shall extend, by a period of two months, any period of time prescribed by the provisions listed in Part 2 of Schedule 4 where
(a) a request is filed on Patents Form 52
(b) no previous request has been made under this paragraph; and
(c) that request is filed before the end of the period of two months beginning immediately after the date on which the relevant period of time expired.
(3) The comptroller may, if he thinks fit, extend or further extend any period of time prescribed by the rules listed in Part 2 of Schedule 4 where
(a) a request is filed on Patents Form 52; and
(b) the person making the request has furnished evidence supporting the grounds of the request, except where the comptroller otherwise directs.
(4) Each request under paragraph (2) or (3) for a period of time to be extended must be made on a separate form unless
(a) each of those requests relate to the same patent or application for a patent; and
(b) the grant of each of those requests would result in the expiry of all the extended periods of time on the same date, in which case those requests may be combined and made on a single form.
(5) Any extension made under paragraph (1) or (3) shall be made
(a) after giving the parties such notice; and
(b) subject to such conditions,as the comptroller may direct, except that a period of time prescribed by the rules listed in Part 3 of Schedule 4 may be extended (or further extended) for a period of two months only.
(6) An extension may be granted under paragraph (1) or (3) notwithstanding the period of time prescribed by the relevant rule has expired.
(7) But no extension may be granted in relation to the periods of time prescribed by the rules listed in Part 3 of Schedule 4 after the end of the period of two months beginning immediately after the period of time as prescribed (or previously extended) has expired.
The rules listed in the above-referenced Parts of Schedule 4 of the Patents Rules 2007 are given below.
r.108(1) is also relevant.
Times or periods prescribed by the Rules thus fall into four categories I to IV with regard to extension under rule 108:
1. periods which cannot be altered
PR Sch 4, Part 1 is also relevant
These are the periods prescribed in the following parts of the Patents Rules 2007: rules 6(2)(b), 7(1), 32(1), 37, 38, 40(1), 43(4), 58(3), 59(1), 66(3), 76(2), 77(8) and (10), 109, 116(2), paragraph 8(5) of Schedule 1 (new deposits of biological material).
2. periods which can be extended (1) by a single period of two months as of right on request and payment of a fee; and (2) by an alternative or additional period(s) at discretion on request and payment of fees
r.108(2), r.108(3) PR, Sch 4, Part 2 is also relevant
These are the periods prescribed in the following parts of the Patents Rules 2007: rules 8(1) and (2), 10(3), 18(1), 21, 22(1), (2) and (5), 28(2), (3) and (5), 30, 56(6) and (7), 58(4), 59(3), 60, 66(1) and (2), 68, paragraph 3(2) of Schedule 1 (filing of information in relation to the deposit of biological matter).
A single two-month extension under rule 108(2) is obtainable for these periods as of right on filing Patents Form 52 together with the appropriate fee.
r.108(2), r.108(3), r.108(6) is also relevant
The alternative or additional extension available at discretion under rule 108(3) has to be requested on Patents Form 52 together with the appropriate fee, and evidence supporting the grounds for the request is required for the comptroller to consider extension. The request may be made after expiry of the period to be extended (but see category IV below). Factors influencing the exercise of discretion are dealt with in 123.37.
[ If the request under r.108(3) concerns formalities matters it is normally considered by the relevant formalities group, but may only be allowed by the divisional Head of Admin (or above), provided it is unopposed. If the request concerns substantive matters it is normally considered by the relevant examiner, but may only be allowed by the group Deputy Director. Furthermore, where extensions of both the s.18(3) reply period (which can be allowed by the examiner) and, under r.108(3), the compliance period are required the group Deputy Director decides both questions. If the request concerns matters connected to a hearing it is normally considered by Litigation Section, and may be allowed by the Head of Litigation Section (or above) provided it is unopposed. If any such request goes to a hearing, the hearing officer is normally a Senior Legal Adviser from PD/CL. However, an opposed request can only be decided upon by a Divisional or Deputy Director.
3. periods (other than in I and II) which can be extended at discretion
r.108(1) r.108(6) is also relevant
Extension at the discretion of the comptroller under rule 108(1) is applicable to many times and periods prescribed by the Rules. The discretionary power under rule 108(1) is a general one to which the only exceptions are times or periods prescribed by any of the rules specified in either category I (no alteration possible) or category II (extensible by two months and/or at the discretion of the comptroller). The request may be made after expiry of the period to be extended (but see category IV below). Factors influencing the exercise of discretion are dealt with in 123.37.
4. periods in II or III which can be extended subject to further conditions
r.108(5), (7) PR Sch 4, Part 3 is also relevant.
These are the periods prescribed in the following rules of the Patents Rules 2007: 10(3), 12(3) and (9), 19, 21(1)(a) and (2)(a), 22, 28, 30, 58(4), 59(3), 60, 66(1) and (2) 68.
r.108(5), r.108(7) is also relevant
The further conditions that apply to extension of these periods are that
(a) any extension must be for two months, and (b) no extension is possible if two months have elapsed since the last period expired.
These conditions limit the retrospective availability of extension of these time periods, but reinstatement of the patent application under section 20A becomes possible in situations where extension is not available (section 20A(3)(a) - see 20A.01 to 20A.13)
Exercise of discretion; conditions
s.20A is also relevant
Discretion should be exercised favourably if it is shown that the failure to meet the time period was unintentional at the time that the period expired (except where the extension of time is for the filing of divisional application - see 15.21). This is consistent with the statutory test that applies to requests for reinstatement under s.20A (see 20A.13-16 for guidance on the meaning of unintentional). However, since rule 108 sets out no statutory test for discretionary extensions of time, discretion may be exercised favourably in appropriate circumstances even if the unintentional criterion does not appear to have been met. Prior to the introduction of the reinstatement provisions under s.20A, a number of cases were decided on the basis that there must have been a continuing underlying intention to proceed with the application or patent; a change of mind regarding whether to proceed on the part of those responsible for its prosecution was held in Heatex Group Ltd’s Application ( RPC 546) not to be a legitimate reason for favourable exercise. In Meunier’s International Application (BL O/013/01), the applicant had chosen to acquire patent protection in the UK via an EP(GB) designation of his international application, rather than by continuing with a GB designation and national phase entry. When it was discovered that, by mistake, EP(GB) had not been designated, a request for the application to belatedly enter the national phase directly was refused by the hearing officer, who regarded this as a change of mind, despite a continuing underlying intention on the part of the applicant to protect his invention in the UK. In a broadly similar set of circumstances, the hearing officer in Pilat’s International Application  RPC 13 came to the same conclusion. In MacMullen’s Application (BLO/307/03), the hearing officer held that in order to demonstrate a continuing underlying intention to proceed with an application where a form and required fee had not been filed within the prescribed period due lack of funds, it was necessary for the applicant to show that he had insufficient funds to pay the fee and that he made genuine and continuing efforts to obtain the required sum during this period. These cases may also be useful in determining whether discretion can be exercised favourably. However, in order to ensure consistency with the reinstatement provisions, if the evidence provided shows that the failure to meet the time period was unintentional, discretion should be exercised favourably regardless of whether or not there has been a continual underlying intention to proceed.
r.108(5) is also relevant
The comptroller has discretion to impose conditions when making an alteration under r.108(1) or r.108(3), after giving the parties such notice as he may direct. For example, in Chitolie’s Application (BL O/078/04, upheld on appeal  EWHC 1549 (Ch)), terms analogous to those employed in restoration proceedings under s.28 were applied where an application was resuscitated by the extension after having been advertised as terminated (much as described in 123.06 where the resuscitation was under r.100).
[ Third party terms will normally be appropriate where the case has been published and previously advertised as terminated (or void in the case of a European patent (UK) for which a translation was not filed in time under s.77(6)). The “cut-off” for such terms will then be the date on which the filing of Form 52 is advertised in the Journal. ]
Although the wording of rule 108 permits certain of the times or periods prescribed by the Patents Rules for doing any act or taking any proceeding thereunder to be extended at the Office discretion, no provisions are included for extending times or periods prescribed by the Act itself (confirmed by the hearing officer in ITT Industries Inc’s Application  RPC 23).
Rule 108(4) provides that each request under rule 108(2) or (3) must be made on a separate Form 52 unless each of those requests relate to the same patent or application and the extended periods would expire on the same date.
The relationship of rule 108 with rule 107 is discussed in 123.06 to 123.10 particularly in connection with the period for filing Form 10 which is defined by rule 28, 60 or 68 (see 18.02) and extensible under rule 108(2) or (3) to (7).
Rule 110 of the Patents Rules 2007 reads as follows
(1) The comptroller may certify any day as an interrupted day where
(a) there is an event or circumstance causing an interruption in the normal operation of the Patent Office; or
(b) there is a general interruption or subsequent dislocation in the postal services of the United Kingdom.
(2) Any certificate of the comptroller given under paragraph (1) shall be displayed in the Patent Office and advertised in the journal.
(3) The comptroller shall, where the time for doing anything under the Act expires on an interrupted day, extend that time to the next following day not being an interrupted day (or an excluded day).
(4) In this rule “excluded day” means a day specified as an excluded day in direction given under section 120; and; “interrupted day” means a day which has been certified as such under paragraph (1).
The comptroller has power under rule 110(1) to certify a day as an interrupted day where there is an event or circumstances causing an interruption in the normal operation of the Office, or where there is a general interruption or subsequent dislocation in UK postal services. A period of time specified under the Act or Rules for the giving, making or filing of any notice, application or other document which expires on a day so certified is extended to the first non-excluded day following the end of the certified interruption. Rule 110(2) requires any such certificate to be displayed in the Office. Although the comptroller’s powers under rule 110(1) are couched in discretionary terms, in practice he is under an obligation to issue a certificate where the circumstances are such as to fall within the words of the rule, and the effect of such a certificate may be retrospective or prospective or both as the case may require (judgment of Patents Court in Omron Tateisi Electronics Co’s Application  RPC 125).
In Armaturjonsson AB’s Application  RPC 213, the Patents Court held that the old form of rule 110 (formerly rule 111) was in no way concerned with individual difficulty or problems of a purely personal kind; it was concerned only with a state of affairs where not just one individual applicant but many applicants or indeed anybody who is under duty to do some act within some prescribed time may be affected. It further held that rule 110 was concerned only with special circumstances which may bring about interruption, which are not going to be catered for by the excluded days provisions. Excluded days (such as the Christmas holiday period in the application in suit) do not constitute a period of general interruption as contemplated within rule 110.
[To certify that there has been an interruption, the comptroller must issue a certificate. The certificate need not be signed by the comptroller himself. The Director of Patents, Director of IPID and PD Divisional and Deputy Directors are all authorised to sign on behalf of the comptroller. Clearly, however, the most senior available officer should be used. Once the certificate is signed, a copy must be displayed in the Office (Concept House and 4 Abbey Orchard Street). A copy must also appear as soon as possible in the various official Journals. Although not a legislative requirement, a prominent website notice is clearly appropriate too. It is very desirable to issue the certificate on the interrupted day in question, but it is not essential to do this. It is possible to certify either before or after the event that the normal operation of the Office will be, or was, interrupted on a particular day. The same publication requirements apply. If the certificate says that a particular day or days were interrupted, then there is no need to issue a further notice. However, if the certificate is open-ended, then we must notify the public when the interrupted period has come to an end. The original certificate may be attached to the notice for reference. The notice should be publicised in the same way as the original certificate – on the website, in Journals and displayed at the Office. The notice need not be made by the same person who signed the certificate, but can be anyone (as identified earlier) who can act on behalf of the comptroller in this respect. It may be helpful to attach an explanatory note to the notice, so that the effect on users is clear. ]
[The certificate applies to time periods set out in the Acts and Rules, and to periods that have been specified by the comptroller. Thus it does not apply to time periods set out under the Patent Co-operation Treaty or the European Patent Convention. Nor does it apply to time periods set out in international trade mark legislation. Some of these treaties and other instruments contain provisions which cater for certain types of disruption in the UK and other states (see, for example, rule 134 EPC). Such provisions are usually more restrictive in their effect than the UK certificate of interruption. So where the filing of documents at the Office is not possible at all, users who wish to meet a deadline under one of these treaties or other instruments will be advised to try and file the relevant documents at an alternative location, if the relevant law allows. There is no simple rule that can be applied, and the position will be determined on a case-by-case basis.]
Rule 111, r.110(2)&(4), r.6(1) is also relevant
Rule 111 of the Patents Rules 2007 reads as follows
(1) The comptroller shall extend any period of time specified in the Act or these Rules where he is satisfied that the failure to do something under the Act or these Rules was wholly or mainly attributable to a delay in, or failure of, a communication service.
(2) Any extension under paragraph (1) shall be made
(a) after giving the parties such notice, and
(b) subject to such conditions,as the comptroller may direct.
(3) In this rule “communication service” means a service by which documents may be sent and delivered and includes post, facsimile, email and courier.
Rule 111 allows the comptroller to extend time periods if a particular case of failure to do something under the Act or Rules was wholly or mainly attributable to a delay in, or failure of, a communication service involving the sending and delivery of documents. This includes post, facsimile, email and courier, both inside and outside the UK. Before allowing any extension under r.111(1), the comptroller is required to give the parties notice, and an extension may be subject to conditions as the comptroller may direct.
It is worth noting, that whilst rule 111 allows for relief where an official communication can, on the balance of probabilities, be demonstrated to have gone astray in the post, the rule requires that the failure to meet a deadline is ‘wholly or mainly’ attributable to the communication failure. If an application is found not to comply with the Act and Rules by the end of the compliance period, it may not be possible to extend the compliance period under rule 111 simply because an examination report was not received. In Daihatsu Motor Co Ltd and others’ Patent (BL O/234/14) the hearing officer determined that it was the “lack of systematic rigour” by the attorney in monitoring the compliance period and tracking the application status, and not the non-arrival of a report of re-examination under section 18(3), that was the main reason for the failure to bring the application in order in time.
[Where correspondence from the Office is reported as never having arrived at its intended destination, or is reported as being misdirected or delayed, this fact should be recorded by sending a minute to the relevant formalities group with any relevant details. The relevant Head of Administration will then decide whether a prescribed or specified period can be extended under rule 111. The head of administration will need to be satisfied ‘that the failure to do something under the Act or these Rules was wholly or mainly attributable to a delay in, or failure of, a communication service’. The original reports may be sent to the address for service or, if the application has been published, the applicant/agent may be directed to the online IPSUM service which additionally contains links to patent citations. Under no circumstances should reports be reissued with new dates unless an extension of time has been agreed by one of the Heads of Administration. Extensions of time under rule 111 may not be used to ‘un-terminate’ an application or extend a time period which has already expired. If required, advice should be sought from Patents Legal Section. Where the relevant deadline has already expired formalities will provide information to the applicant on other means of extending deadlines such as; use of r.108 (see 123.34-123.38), s.117B(2) (see 117B.02 and 18.53, or reinstatement under s.20A (see 20A.03). ]
|(i) giving effect to an inventor’s rights to be mentioned conferred by section 13, and providing for an inventor’s waiver of any such right to be subject to acceptance by the comptroller;|
Mention of inventor
Rule 10 sets out the procedure where any person alleges that he ought to have been mentioned as the inventor or joint inventor of an invention, see 13.04 to 13.07, or that any person mentioned as sole or joint inventor ought not to have been so mentioned, see 13.17.
See 13.08 to 13.15 for details of the procedure for identifying the inventor or inventors (and derivation of the right to apply) where the applicant is not the inventor or sole inventor.
The procedure for a person named as inventor to waive his right to be mentioned is set on in rule 11, see 13.03 to 13.03.1.
|(j) without prejudice to any other provision of this Act, requiring and regulating the translation of documents in connection with an application for a patent or a European patent or an international application for a patent and the filing and authentication of any such translations;|
The general rule regarding translations of documents in connection with patent applications is rules 113 to 115, but rules 6 to 9, 35, 56 to 59 and 66 and 68 to 70 are also relevant.
Rule 9 relates to the translation of priority documents, see 5.11 to 5.13, and r.35(4) and (5) concerns the need for translations where it is desired to amend a patent of which the specification as published was not in English.
Rules 56 and 57 relate to translations of European patents (UK) and of claims of applications for such patents, under ss.77(6) (see 77.13-25) 78(7) (see 78.11-15) and 80(3) (see 80.02-06). Rules 58(4) and 59(3) relate to a translation of a European patent application where conversion into an application under the Act has been requested under section 81 (see 81.05-06).
Rule 69(1)(b) and (5)(b) relate to a translation of information regarding the deposit of biological material in connection with an international application (UK), see 89A.10. In addition, rules 69 and 70 relate to the required content of any translation of an international application (UK) and amendments thereof, see 89A.08-09 and 89A.25.
According to rule 113(1), any document or part thereof not in English is required to be accompanied by a translation, unless that document is listed in r.113(2). Where the document is or forms part of an application for a patent and no translation is filed see 15.06.1, 15.06.2, and 16.14.
r.115 is also relevant
It is not normally necessary to verify the translation. However, where the comptroller has reasonable doubts about the accuracy of any translation of a document, the person supplying the translation is notified and asked to furnish evidence to establish that the translation is accurate. If evidence is not provided following this request, the comptroller has discretion to take no further action in relation to that document. An acceptable form of verification certificate is quoted in 5.13.2.
r.113(3) is also relevant
Where more than one copy of a document is filed or sent, it should be accompanied by a corresponding number of copies of the translation.
r.113(5), r.113(6), r.108(1) is also relevant
Where an International Search Report, an International Preliminary Report on Patentability or an International Preliminary Examination Report is filed at the Office in relation to an international application for a patent (UK) and that report cites or refers to any document in a language other than English or Welsh, a translation into English of the document may be requested. It should be filed within two months (extensible at the comptroller’s discretion) of the date of the request. If it is not filed, the comptroller may, if he thinks fit, take no further action in relation to the application. See also 89B.10-11.
r.114 is also relevant
A party who institutes proceedings before the comptroller in relation to a European patent (UK), the published specification of which is in French or German, is required to furnish a translation of the specification unless such a translation has already been filed under s.77(6) or the comptroller determines that it is not necessary. This also applies to the making of a request for an opinion under section 74A. A party given leave to amend the patent during such proceedings is required to furnish a translation of the amendment into the language in which the specification was published.
Register of patent agents
|(k) related to registration of patent agents. Together with other provisions of the 1977 Act concerning patent agents, it has been repealed by the CDP Act and replaced by Part V of the CDP Act (Patent Agents and Trade Mark Agents), see particularly s.275 thereof.|
|(l) providing for the publication and sale of documents in the Patent Office and of information about such documents.|
Publication and sale of documents
According to rule 119, the comptroller may arrange for the publication and sale of copies of documents (in particular, specifications of patents and applications for patents) in the Office.
|The comptroller may set out in directions any forms the use of which is required by the rules; and any such directions shall be published in the prescribed manner.|
Subsection (2A) was inserted by the Patents Act 2004 and enables the comptroller to specify in directions the content and layout of the Patents Forms, which previously had to be prescribed by rules. A direction under this subsection was made on 5 December 2007 and came into force on 17 December 2007. This direction revoked the earlier direction for forms made on 30 March 2006. A further direction was made on 18 April 2008 setting out revised versions of Patents Forms 20 and 54 which came into force on 1 May 2008. Both directions are reprinted in the “Relevant Official Notices and Directions” section of this Manual. Directions given under s.123(2A) are required to be published in the Journal under r.117(c).
|Rules may make different provision for different cases.|
|It is hereby declared that rules
(a) authorising the rectification of irregularities of procedure, or
(b) providing for the alteration of any period of time, may authorise the comptroller to extend or further extend any period notwithstanding that the period has already expired.
The CDP Act inserted subsection (3A) into section 123 of the 1977 Act which is concerned with the power to make rules under that Act. The rules prescribe various times or periods for performing particular actions. The rules also empower the comptroller to extend some of those times or periods. It has always been assumed that such extension can be made even though the time or period has already expired, and the rules have always been operated on that basis. Subsection (3A) has been added as an “avoidance of doubt” provision. This paragraph came into effect on Royal Assent (15 November 1988). See 123.34 to 123.47 for details of such extensions of periods.
[Sections 123(4) and (5) Repealed]
Subsections (4) and (5) of s.123 required Treasury consent in order to make rules prescribing fees and to determine the remuneration of advisers appointed to assist the comptroller in proceedings. These requirements were removed by the repeal of these subsections by Schedule 2 paragraph 26 of the Patents Act 2004.
|Rules shall provide for the publication by the comptroller of a journal (in this Act referred to as “the journal”) containing particulars of applications for and grants of patents, and of other proceedings under this Act.|
The Patents Journal contains particulars of applications for and grants of patents (see 14.04.3) and of other proceedings under the Act and any other information that the comptroller considers to be generally useful or important, as required by rule 117. It is published weekly, usually on a Wednesday.
Publication of applications and grant of patents are advertised in the Journal as required by sections 16 (see 16.02 and 24 (see 24.01-24.02) respectively. Other particulars of proceedings under the Act given in the Journal include those mentioned in 123.22 to 123.24.
Certain information about European Patents (UK) is also listed, viz such patents granted under Article 97 of the European Patent Convention, such patents revoked under Article 101 of that Convention, such patents declared void under s.77(7) for failure to file a translation into English and such patents ceased through non-payment of renewal fees.
In addition, the Journal includes information about Office publications, official notices issued by the Office, brief particulars of recent judgments and decisions, proceedings under the Registered Designs Act 1949 and information concerning the Science Reference Library.
|Rules shall require or authorise the comptroller to make arrangements for the publication of reports of cases relating to patents, trade marks, registered designs or design right decided by him and of cases relating to patents (whether under this Act or otherwise) trade marks, registered designs, copyright and design right decided by any court or body (whether in the United Kingdom or elsewhere).|
Reports of cases
The comptroller is required by rule 118 to make arrangements for the publication of reports of cases relating to patents, trade marks, registered designs or design right decided by him and reports of cases relating to patents (whether under the Act or otherwise), trade marks, registered designs, copyright and design right decided by any court or body (whether in the United Kingdom or elsewhere). The Office therefore arranges for the publication of the Reports of Patent, Design and Trade Mark Cases (RPCs).
The CDP Act amended s.123(7) to cover cases relating to Design Right, whether decided by the comptroller or by any court or body in the UK or elsewhere.