The Patents Rules 1990

• (b) in accordance with rule 57 of those Regulations, pay the handling fee therein referred to; and

• (c) upon request by the Patent Office, pay to it an amount which is the equivalent in sterling of the search fee referred to in rule 118(3).

Additional fees for further inventions

121

Where under rule 68.2 of those Regulations the Patent Office, as International Preliminary Examining Authority, reports to the applicant that the requirement of unity of invention is not complied with and the applicant decides to pay an additional fee in respect of each invention other than the main invention, the additional fee payable to the Patent Office in respect of each invention shall not exceed the appropriate prescribed preliminary examination fee.

Fees to be paid in sterling

122

The fees referred to in rules 118 to 121 shall be paid in sterling.

Transitional provisions and revocations

123

• (1) The reference to Schedule 2 to the Patents Rules 1968[^f00009] in paragraph (a) of the proviso to rule 124 of the Patents Rules 1978[^f00010] shall be construed as a reference to that Schedule with the substitution for forms 7, 9, 14 to 21, 23, 32 to 36, 38, 39, 43, 44, 46, 53 to 55, 63 to 65 and 69 of the correspondingly numbered forms in Schedule 5.

• (2) In rule 124 of the Patents Rules 1978—

• (a) for the words “the Patents Rules 1982” in each place where they occur, there shall be substituted the words “the Patents Rules 1990”;

• (b) for paragraph (d) of the proviso to paragraph (1), there shall be substituted—

(d) subject to sub-rule (3) below, rules 30, 39(1) and (3) to (6), 41 to 50, 52, 61 to 66, 68 to 74, 76, 88(1), 90, 92 to 95, 97 to 101, 103 to 108, and 114 to 116 of the Patents Rules 1990 shall apply.

• and for the words “in rule 39(1)” in paragraph (4) there shall be substituted the words “in rule 39(1) of the Patents Rules 1990”.

• (3) The rules described in column 1 of Schedule 6 are hereby revoked to the extent specified in column 3 thereof.

• (4) Where—

• (a) immediately before these Rules come into force, any time or period prescribed by the Rules hereby revoked has effect in relation to any act or proceeding and has not expired; and

• (b) the corresponding time or period prescribed by these Rules would have expired or would expire earlier,

the time or period prescribed by those Rules and not by these Rules shall apply to that act or proceeding.

SCHEDULE 1 — GENERAL FORMS

SCHEDULE 2 — MICRO-ORGANISMS

Applications

1

• (1) The specification of an application for a patent, or of a patent, for an invention which requires for its performance the use of a micro-organism—

• (a) which is not available to the public at the date of filing of the application; and

• (b) which cannot be described in the specification in such a manner as to enable the invention to be performed by a person skilled in the art,

shall, in relation to the micro-organism itself, be treated for the purposes of the Act as disclosing the invention in such a manner only if one of the conditions set out in subparagraph (2) below is satisfied.

• (2) The conditions referred to in subparagraph (1) above are—

• (a) a condition that,—

• (i) not later than the date of filing of the application, a culture of the micro-organism has been deposited in a depository institution which is able to furnish a sample of the micro-organism; and

• (ii) the name of the depository institution, the date when the culture was deposited and the accession number of the deposit are given in the specification of the application; and

• (b) a condition, in the case of a European patent (UK), an application for a European patent (UK) or an international application for a patent (UK) which is treated, by virtue of section 77, 81 or 89 as a patent under the Act, or, as the case may be, an application for a patent under the Act, that the corresponding provisions of the Implementing Regulations to the European Patent Convention or, as the case may require, the Patent Co-operation Treaty have been complied with,

and, where a new deposit is made under paragraph 4 below, a further condition that the applicant or proprietor makes a new deposit in accordance with that paragraph.

• (3) Where the information specified in subparagraph (2)(a)(ii) above is not contained in an application for a patent as filed, it shall be added to the application—

• (a) before the end of the period of sixteen months after the declared priority date or, where there is no declared priority date, the date of filing of the application;

• (b) where, on a request made by the applicant, the comptroller publishes the application before the end of the period prescribed for the purposes of section 16(1), before the date of the request; or

• (c) where the comptroller sends notification to the applicant that, in accordance with subsection (4) of section 118, he has received a request by any person for information and inspection of documents under subsection (1) of that section, before the end of one month after his sending to the applicant notification of his receipt of the request,

whichever is the earliest.

• (4) The giving of the information specified in subparagraph (2)(a)(ii) above shall constitute the unreserved and irrevocable consent of the applicant to the depository institution with which a culture (including a deposit which is to be treated as having always been available by virtue of paragraph 4(2) below) is from time to time deposited making the culture available on receipt of the comptroller’s certificate authorising the release to the person who is named therein as a person to whom the culture may be made available and who makes a valid request therefor to the institution.

• (5) The specification of an application for a patent described in paragraph (1) above shall mention any international agreement under which the micro-organism concerned is deposited.

• (6) In relation to an application for a patent filed before this paragraph and paragraphs 2, 3 and 4 below come into force, rule 17 of the Patents Rules 1982[^f00011] shall continue to have effect notwithstanding its revocation by rule 123(3) of these Rules.

Availability of cultures

2

• (1) Save where paragraph 3 below has effect, a request that the comptroller certify a person as a person to whom a depository institution may make available a sample of a micro-organism—

• (a) before publication of the application for a patent, to a person who has made a request under section 118(1) in the circumstances mentioned in paragraph 1(3)(c) above; and

• (b) at any later time, to any person,

shall be made on Patents Form 8/77 (which shall be filed in duplicate) together, in the case of a micro-organism of which a culture is deposited under the Budapest Treaty with an international depository authority, with the form provided for by the Regulations under that Treaty.

• (2) The comptroller shall send a copy of any form lodged with him under subparagraph (1) above and of his certificate authorising the release of the sample—

• (a) to the applicant for, or proprietor of, the patent;

• (b) to the depository institution; and

• (c) to the person making the request.

• (3) A request under subparagraph (1) above shall comprise, on the part of the person to whom the request relates, undertakings for the benefit of the applicant for, or proprietor of, the patent—

• (a) not to make the culture, or any culture derived from it, available to any other person; and

• (b) not to use the culture, or any culture derived from it, otherwise than for experimental purposes relating to the subject matter of the invention,

and—

• (i) subject to (iii) below, both undertakings shall have effect during any period before the application for a patent has been withdrawn, has been taken to be withdrawn, has been treated as having been withdrawn, has been refused or is treated as having been refused (including any further period allowed under rule 100 or rule 110(1) or (4) but excluding, where an application is reinstated under either of those rules, the period before it is reinstated);

• (ii) if a patent is granted on the application, the undertaking set out in subparagraph (a) above shall also have effect during any period for which the patent is in force and during the period of six months referred to in section 25(4); and

• (iii) the undertaking set out in paragraph (b) shall not have effect after the date of publication in the Journal of a notice that the patent has been granted,

and, in this subparagraph, references to a culture derived from a deposited culture of a micro-organism are references to a culture so derived which exhibits those characteristics of the deposited culture essential for the performance of the invention.

• (4) For the purpose of enabling any act specified in section 55 to be done in relation to the culture for the services of the Crown, the undertakings specified in subparagraph (3) above—

• (a) shall not be required from any government department or person authorised in writing by a government department for the purposes of this paragraph; and

• (b) shall not have effect in relation to any such person who has already given them.

• (5) An undertaking given pursuant to subparagraph (3) above may be varied by way of derogation by agreement between the applicant or proprietor and the person by whom it is given.

• (6) Where, in respect of a patent to which the undertaking set out in subparagraph 3(a) has effect,—

• (a) an entry is made in the register under section 46 to the effect that licences are to be available as of right; or

• (b) a compulsory licence is granted under section 48,

that undertaking shall not have effect to the extent necessary for effect to be given to any such licence.

Availability of cultures to experts

3

• (1) Where, before the preparations for publication under section 16 of an application for a patent have been completed, the applicant gives notice to the comptroller on Patents Form 8A/77 of his intention that a sample of the micro-organism should be made available only to an expert, the provisions of this paragraph shall have effect.

• (2) The comptroller—

• (a) shall publish with the application notice that the provisions of this paragraph have effect; and

• (b) notwithstanding paragraph 2 above, shall not, until the patent is granted or the application has been withdrawn, has been taken to be withdrawn, has been treated as having been withdrawn, has been refused or is treated as having been refused, issue any certificate authorising release of a sample otherwise than under this paragraph.

• (3) Any person wishing to have a sample of the micro-organism made available (“the requester”)—

• (a) shall apply to the comptroller on Patents Form 8B/77 (which shall be filed in duplicate together, in the case of a micro-organism of which a culture is deposited under the Budapest Treaty with an international depository authority, with the form provided for by the Regulations under that Treaty) nominating the person (“the expert”) to whom he wishes the sample to be made available; and

• (b) shall at the same time file undertakings by the expert as set out in subparagraph (3) of paragraph 2 above in accordance with the provisions of that paragraph.

• (4) The comptroller shall send a copy of Patents Form 8B/77 filed under subparagraph (3) above to the applicant for the patent and shall specify the period within which the applicant may object, in accordance with subparagraph (5) below, to a sample of the micro-organism being made available to the expert.

• (5) Unless, within the period specified by the comptroller under subparagraph (4) above (or within such longer period as the comptroller may, on application made to him within that period, allow), the applicant for the patent sends notice in writing to the comptroller that he objects to a sample of the micro-organism being made available to the expert and gives his reasons for his objection, the comptroller shall send a copy of any form lodged with him under subparagraph (3)(a) above and of his certificate authorising the release of the sample—

• (a) to the applicant for the patent,

• (b) to the depository institution concerned,

• (c) to the requester, and

• (d) to the expert.

• (6) Where, in accordance with subparagraph (5) above, the applicant for the patent sends notice to the comptroller of his objection to the issue of a certificate in favour of the expert, the comptroller—

• (a) shall decide, having regard to the knowledge, experience and technical qualifications of the expert and to any other factors he considers relevant, whether to issue his certificate in favour of the expert; and

• (b) if he decides to authorise the release of the sample to the expert, shall send to the persons referred to in subparagraph (5) above a copy of any form lodged with him under subparagraph (3)(a) above and of his certificate authorising the release of the sample to the expert.

• (7) Before making a decision in accordance with subparagraph (6) above, the comptroller shall afford the applicant and the requester the opportunity of being heard.

• (8) If the comptroller decides under subparagraph (6) above not to issue his certificate in favour of the expert, the requester may, by notice in writing to the comptroller and the applicant, nominate another person as the expert for the purposes of this paragraph; and the comptroller shall give such directions as he shall think fit with regard to the subsequent procedure.

• (9) Nothing in this paragraph shall affect the rights under section 55 of any government department or any person authorised in writing by a government department.

New deposits

4

• (1) Where the depository institution with which a deposit or a new deposit of a culture has been made under this Schedule—

• (a) notifies the applicant or proprietor that it—

• (i) cannot satisfy a request made in accordance with paragraph 2(1) or 3(3) above, or

• (ii) is not able lawfully, to satisfy such a request,

for the culture to be made available;

• (b) ceases temporarily or permanently to carry out the functions of a depository institution; or

• (c) ceases for any reason to conduct its activities as a depository institution in an objective and impartial manner,

subject to subparagraph (3) below, the applicant or proprietor may, unless the culture has been transferred to another depository institution which is able to make it available, make a new deposit of a culture of that micro-organism.

• (2) For the purposes of paragraph 1 above and of this paragraph, the deposit shall be treated as always having been available if, within three months of the receipt of such notification or of the depository institution ceasing to perform the functions of a depository institution or to conduct its activities as such an institution in an objective and impartial manner, the applicant or proprietor,—

• (a) in a case where the deposit has not already been transferred, makes the new deposit;

• (b) furnishes to the depository institution with which the new deposit is made a declaration that the culture so deposited is of the same micro-organism as was the culture originally deposited; and

• (c) requests amendment of the specification under section 19 or section 27, as the case may be, so as to indicate the accession number of the transferred or new deposit and, where applicable, the name of the depository institution with which the deposit has been made.

• (3) The new deposit referred to in subparagraph (1) above—

• (a) shall, save as provided in subparagraph (b) below, be made with the same depository institution as was the original deposit; or

• (b) in the cases referred to in subparagraphs (1)(a)(ii), (b) and (c) above, shall be made with another depository institution which is able to satisfy the request.

Interpretation of Schedule

5

• (1) In this Schedule—

• “the Budapest Treaty” means the Treaty on the International Recognition of the Deposit of Micro-organisms for the purposes of Patent Procedure done at Budapest in 1977;

• and “international depository authority” means a depository institution which has acquired the status of international depository authority as provided in Article 7 of the Budapest Treaty.

• (2) For the purposes of this Schedule a “depositary institution” is an institution which, at all relevant times,—

• (a) carries out the functions of receiving, accepting and storing micro-organisms and the furnishing of samples thereof; and

• (b) conducts its affairs in so far as they relate to the carrying out of those functions in an objective and impartial manner.

SCHEDULE 3 — FORM OF CERTIFICATE OF GRANT OF PATENT

SCHEDULE 4 — EUROPEAN PATENTS AND APPLICATIONS (UK): TRANSLATIONS

Translations of European Patents (UK) filed under section 77(6)

1

• (1) A translation filed under section 77(6) shall be filed in duplicate and shall be accompanied by—

• (a) Patents Form 54/77 in duplicate, in the case of a translation filed under section 77(6)(a), or

• (b) Patents Form 55/77 in duplicate, in the case of a translation filed under section 77(6)(b).

• (2) A translation filed under section 77(6) shall comprise a translation of the entirety of the published specification of the patent (including the claims), irrespective of whether a translation of all or any part of the claims contained in the specification has previously been filed under section 78(7) but subject to subparagraph (5) below, and shall include any drawings in the specification, irrespective of whether the drawings contain textual matter.

• (3) A translation filed under section 77(6) shall comply with the following requirements as to presentation, subject to subparagraph (4) below in the case of any drawings—

• (a) it shall permit of direct reproduction by photography, electrostatic processes, photo-offset and micro-filming, in an unlimited number of copies;

• (b) it shall be on A4 paper (29.7 cm × 721 cm) which shall be pliable, strong, white, smooth, matt and durable;

• (c) each sheet of paper shall be free from cracks, creases and folds and used on one side only;

• (d) each sheet shall be used with its short sides at the top and bottom (upright position);

• (e) the minimum margins shall be—

top	2.0 cm;
left side	2.5 cm
right side	2.0 cm
bottom	2.0 cm;

• (f) the margins of the sheets shall be completely blank;

• (g) the translation shall be typed or printed in single-line spacing (unless the comptroller otherwise permits), in a dark, indelible colour and in characters of which the capital letters are not less than 0.21 cm high, save that graphic symbols and characters and chemical and mathematical formulae may, instead of being typed or printed, be written or drawn;

• (h) the translation shall be reasonably free from extraneous matter and also from deletions and other alterations, overwritings and interlineations and shall, in any event, be legible; and

• (i) each sheet (other than a sheet of drawings) shall be numbered consecutively in arabic numerals.

• (4) Where a translation including any drawings is filed, the sheets of drawings shall correspond exactly in content and presentation to the sheets of drawings which were published by the European Patent Office, except that—

• (a) each sheet shall be numbered consecutively in arabic numerals, as a separate series from that used for the other sheets of the translation, if not so numbered when published by the European Patent Office; and

• (b) any textual matter contained in the published drawings shall be replaced with a translation into English.

• (5) For the purposes of subparagraph (2) above, the published specification of the patent shall be taken not to include—

• (a) anything which does not consist of, or form part of, the description of the invention, the claims or the drawings referred to in the description or the claims;

• (b) any claim not having effect in the United Kingdom; or

• (c) anything published in a language other than the language of the proceedings (within the meaning of Article 14 of the European Patent Convention).

Periods prescribed under section 77(6)

2

• (1) The period prescribed under section 77(6)(a) for filing a translation of the specification of a European patent (UK) and paying the prescribed fee shall be three months from the date of publication of the mention of the grant of the patent in the European Patent Bulletin.

• (2) The period prescribed under section 77(6)(b) for filing a translation of the specification as amended of a European patent (UK) and paying the prescribed fee shall be three months from the date of publication by the European Patent Office of the specification of the patent as amended.

Translations of claims of applications for European patents (UK) filed under section 78(7)

3

• (1) A translation of the claims of an application for a European Patent (UK),—

• (a) in the case of an application which has been published by the European Patent Office, may be filed under subsection (7) of section 78 after the application has been so published; and

• (b) in the case of an application which has not been so published but which is the subject of proceedings before the European Patent Office by virtue of Article 150 of the European Patent Convention, may be filed under that subsection after the application has been published under Article 21 of the Patent Co-operation Treaty.

• (2) A translation filed by virtue of subparagraph (1) above shall be filed in duplicate and shall be accompanied by Patents Form 56/77, also filed in duplicate.

• (3) The translation shall comply with the requirements contained in paragraph 1(3) above.

Corrected translations filed under section 80(3)

4

• (1) A corrected translation filed under section 80(3) shall be filed in duplicate.

• (2) The corrected translation shall comply with the requirements contained in paragraph 1(3) and (4) above.

• (3) Publication of the corrected translation shall be requested on Patents Form 57/77, which shall be filed in duplicate.

• (4) The period prescribed under section 80(3) for payment of the prescribed fee shall be fourteen days from the day on which the corrected translation is filed.

Verification of translation

5

A translation shall be verified to the satisfaction of the comptroller as corresponding to the original text of—

• (a) the specification, in the case of a translation filed under section 77(6)(a);

• (b) the specification as amended, in the case of a translation filed under section 77(6)(b);

• (c) the claims of the specification of the application, in the case of a translation filed under section 78(7); or

• (d) the specification of the patent or the claims of the application, as the case may be, in the case of a translation filed under section 80(3),

and if such verification does not accompany the translation when filed it shall be filed within one month of the sending by the comptroller of a written request for such verification.

Inspection of translations

6

A request for inspection of a translation published under section 77(8), 78(7) or 80(3) shall be made on Patents Form 23/77.

SCHEDULE 5 — PATENTS ACT 1949 FORMS

SCHEDULE 6 — REVOCATIONS

(1)	(2)	(3)
Rules revoked	References	Extent of revocation
The Patents Rules 1982	S.I. 1982/717	Subject to rules 39(2) proviso and 62(7) and paragraph 1(6) of Schedule 2, the whole Rules.
The Patents (Amendment) Rules 1983	S.I. 1983/180	The whole rules.
The Patents (Amendment) Rules 1985	S.I. 1985/785	The whole rules.
The Patents (Amendment) (No. 2) Rules 1985	S.I. 1985/1166	The whole rules.
The Patents (Amendment) Rules 1987	S.I. 1987/288	The whole rules except rules 4 and 5.
The Patents (Amendment) Rules 1988	S.I. 1988/2089	The whole rules.
The Patents (Amendment) Rules 1989	S.I. 1989/1116	The whole rules.
The Patents (Amendment) Rules 1990	S.I. 1990/1455	The whole rules.

Signed

Hesketh — Minister of State, — Department of Trade and Industry — 29th November 1990

Explanatory note

(This note is not part of the Rules)

These Rules consolidate, with modifications, the Patents Rules 1982 as amended. In addition to minor and drafting amendments, they make the following changes of substance—

• (a) the forms prescribed under the Patents Act 1977 (“the Act”) and the forms remaining under the Patents Act 1949 have been modified (rule 4 and Schedule 1; rule 123(1) and Schedule 5);

• (b) modified procedures are provided for references to the comptroller concerning questions about entitlement to patents before grant and determination of rights to patents after grant (rules 7, 8 and 54);

• (c) the period within which a person must send a response to a communication in proceedings before the comptroller between parties has been reduced (from three months) to two months from the date when the communication was sent to him (rules 7, 8, 12, 13, 14, 40, 43, 54, 58, 59, 62, 64, 65, 71, 72, 73, 74, 75, 78, 91 and 108);

• (d) revised provision is made in relation to applications for patents, and to patents, for inventions which require for their performance the use of micro-organisms (rule 17 and Schedule 2);

• (e) any figure of drawings to accompany the abstract must now be indicated on the abstract itself (rule 19);

• (f) revised provision is made relating to new applications for patents which derive from earlier applications (rules 24 and 26);

• (g) the comptroller is empowered to send copies of documents referred to in the examiner’s reports under sections 17 and 18 of the Act to persons concerned (rules 28, 32 and 33);

• (h) a prescribed fee can now be required where a supplementary search under section 17(8) of the Act is necessary (rule 32);

• (i) new provision is made relating to the period during which an application for a patent is to be put in order where observations have been made under section 21 of the Act (rule 34);

• (j) revised provision is made relating to the manner in which amendments and corrections are to be made in an application for a patent or a patent (rules 35, 36, 40, 47 and 91);

• (k) the comptroller is now required to send to the applicant copies of documents received by him relating to observations under section 21 of the Act (rule 37);

• (l) revised provision is made for the payment of fees for the renewal of patents (rule 39);

• (m) new and additional provision is made for time limits relating to the restoration of lapsed patents (rule 41);

• (n) the comptroller may now prevent inspection or copying of documents (or parts of documents) containing offensive or disparaging matter (rules 52 and 93);

• (o) modified procedures are provided concerning applications for licences of right (rule 62);

• (p) the provisions relating to translations provided in connection with European Patents (UK) and applications therefor are modified (rule 80 and Schedule 4);

• (q) a revised time limit is introduced relating to the conversion of a European patent application into an application under the Act (rule 82);

• (r) the provisions relating to international applications for patents have been modified (rule 85);

• (s) provision is now made for the abridgement, with consent of the person affected, of time limits restraining exercise of the comptroller’s discretion (rule 88);

• (t) certain limitations as to times or periods under the Rules may now be extended before they have expired (rule 100);

• (u) additional provision is made for the extension of certain new time limits introduced by these Rules (rule 110); and

• (v) the requirements concerning translations of documents filed at the Patent Office are modified (rule 113).

At the date of making of these Rules, the address of the Patent Office is State House, 66–71 High Holborn, London WC1R 4TP.

Footnotes

[^f00001]: 1977 c. 37; section 17(8) was added by the Copyright, Designs and Patents Act 1988 (c. 48), section 295 and Schedule 5, paragraph 3; section 28(1) was amended, and section 28(1A) and 2(A) were added, by the said Act of 1988, section 295 and Schedule 5, paragraph 6; section 32 was replaced by the Patents, Designs and Marks Act 1986 (c. 39), section 1 and Schedule 1, paragraph 4; section 77 was amended by the said Act of 1988, section 295 and Schedule 5, paragraphs 8 and 21; section 89 was replaced, and section 89A was inserted by the said Act of 1988, section 295 and Schedule 5, paragraph 25; section 118(3) was amended by the said Act of 1988, section 295 and Schedule 5, paragraph 28; section 123 was amended by the said Act of 1988, section 295 and Schedule 5, paragraph 29; section 125A was added by the said Act of 1988, section 295 and Schedule 5, paragraph 30; paragraph 4(A) of Schedule 1 was added by section 293 of the said Act of 1988.

[^f00002]: 1971 c. 62.

[^f00003]: 1949 c. 87.

[^f00004]: S.I. 1982/717 to which there are no relevant amendments.

[^f00005]: S.I. 1982/717 to which there are no relevant amendments.

[^f00006]: 1975 c. 34.

[^f00007]: 1971 c. 80.

[^f00008]: S.I. 1968/1389, amended by S.I. 1970/955, 1971/1917, 1973/66, 1975/891, 1021 and 1262 and revoked with savings by S.I 1978/216.

[^f00009]: S.I. 1968/1389, amended by S.I. 1970/955, 1971/1917, 1973/66, 1975/891, 1021 and 1262 and revoked with savings by S.I. 1978/216.

[^f00010]: S.I. 1978/216.

[^f00011]: S.I. 1982/717, to which there are no relevant amendments.