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Patents Rules
1992
(as amended)
Changes Tracked – Colour Coded.
Note to users:
Amended by
S.I. 579/2015 European Communities (Patent Agents) Regulations 2015
Patents, Trade Marks and Design (Fees) (Amendment) (No.2) Rules 2012
Patent (Amendment) Rules
2012
Patents, Trade Marks and Design (Fees) (Amendment) Rules 2012
Patent (Amendment) Rules
2011
Patent (Amendment) Rules
2009
Patents, Trade Marks and Designs (Fees) (Amendment) Rules 2008
Patent (Amendment) Rules
2008
Patent (Amendment) Rules
2006
Patents, Trade Marks and
Design (Fees) Rules 2001
SI 247 of 2000 European Communities (Legal Protection of Biotechnological Inventions) Regulations
Patents, Trademarks, Copyright and Design (Fees) Rules 1997
Repealed or Deleted
This is an unofficial consolidation of the Patents Rules 1992 and amendments up to and including the 17 December 2015 and is produced here as a reference document only. This document has no legal force. The Patents Rules, 1992 has been updated on a number of occasions since it came into force on 2nd July 1992, but has not been officially consolidated into a single text. Whilst every effort has been made to ensure the accuracy of the information/material contained on this document, the State nor the Department of Enterprise, Trade and Innovation, its servants or agents assume no responsibility for and give no guarantees, undertakings or warranties concerning the accuracy, completeness or up to date nature of the information provided and do not accept any liability whatsoever arising nor for any errors or omissions in this document.
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Preliminary.
Rules for Part II, Chapter II of the Act.
Rules for Part II, Chapter III of the Act.
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Rules for Part II, Chapter IV of the Act.
Rules for Part II, Chapter V of the Act.
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Rules for Part II, Chapter VIII of the Act.
Rules for Part III of the Act.
Rules for Part IV of the Act.
Rules for Part VI of the Act.
Rules for Part VII of the Act.
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Rules for Part VIII of the Act.
Rules for Part IX of the Act.
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Rules for Part X of the Act.
Rules for Part XI of the Act.
Rules for Part XII of the Act.
83A. Restoration where translation not filed under section 119(6).
(Added by ■, Amended by ■)
83B. Opposition to restoration where translation not filed under section 119(6). (Added by ■, Amended by ■)
General.
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Schedule I.
Schedule II.
Schedule III.
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I, DESMOND O'MALLEY, Minister for Industry and Commerce, in exercise of the powers conferred on me by section 114 of the Patents Act, 1992 (No. 1 of 1992), and in exercise, with the sanction of the Minister for Finance, of the powers conferred on me by section 99 of that Act, hereby make the following Rules:
Preliminary.
1. These Rules may be cited as the Patents Rules, 1992.
2. These Rules shall come into operation on such day as the Minister appoints under section 1(2) for the commencement of the Act.
3. (1) In these Rules—
"the Act" means the Patents Act, 1992 ;
"Form" means a form set out in Schedule II. “Form” means a form set out in
Schedule II.
“Implementing Regulations” means the Implementing Regulations to the European
Patent Convention.
(2) In these Rules, unless otherwise indicated, a reference by number to a Rule is to the Rule of these Rules bearing that number and a reference to a paragraph is a reference to a paragraph of the Rule in which the reference occurs.
(2) In these Rules, unless otherwise indicated—
(a) a reference by number to a Rule is to the Rule of these Rules bearing that number, and a reference to a paragraph or other division, by whatever name called, shall be read as a reference to a paragraph or other such division of the Rule or of the provision, as the case may be, in which the reference occurs,
(b) a reference by number to a section is to the said numbered section of the
Act.
4. (1) Subject to paragraph (2), the Rules specified in Schedule III to these Rules are
hereby revoked.
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(2) The said Rules shall continue to apply in relation to any matter to which, by virtue of section 5 of and the First Schedule to the Act, any provisions of the Act of 1964 continue to apply.
Rules for Part II, Chapter II of the Act.
5. (1) An applicant for a patent who wishes the disclosure of matter constituting an
invention to be disregarded in accordance with section 12 (1) (b) shall, at the time of the filing of the patent application, inform the Controller in writing that the invention has been displayed at an international exhibition.
(2) The applicant shall, within four months of the date of filing of the patent application, file the certificate referred to in section 12 (1) (b) issued at the exhibition by the authority responsible for the protection of industrial property at that exhibition, and stating that the invention was in fact exhibited there. The certificate shall also state the opening date of the exhibition and, where the first disclosure of the invention did
not coincide with the opening date of the exhibition, the date of the first disclosure. The
certificate shall be accompanied by an identification of the invention, duly authenticated by the above-mentioned authority.
Rules for Part II, Chapter III of the Act.
6. (1) Subject to the provisions of Rules 86 (1) and (2), if the applicant is not the sole inventor or the applicants are not the joint inventors, the statement under section 17 (2)
identifying the inventor or inventors and, where required by section 17 (2)(b), the derivation of the right of the applicant or applicants to be granted the patent shall be
made on Form No. 2 within the period of sixteen months after the date of priority or, where there is no claim to priority, the date of filing the application. An extra copy of
this Form shall be filed for each inventor who is not also an applicant.
(1) Subject to the provisions of Rules 86 (1) and (2), if the applicant is not the sole inventor or the applicants are not the joint inventors, the statement under section 17(2) identifying the inventor or inventors and, where required by section 17(2)(b), the derivation of the right of the applicant or applicants to be granted the patent shall be made on Form No. 2 within the period of sixteen months after the date of priority or, where there is no claim to priority, the date of filing the application.
(2) If the statement referred to in paragraph (1) is furnished at the date of filing of the application it may be made on Form No. 1.
(3) Where a divisional application, or a new application under section 81, is filed after the period of 16 months prescribed in paragraph (1), the requirement of that provision shall be complied with at the actual filing date of the divisional or new application as the case may be.
7. (1) An application to the Controller in pursuance of section 17 (1) or (3) by any person who alleges—
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( a ) that he ought to have been mentioned as the inventor or joint inventor of an invention in any specification of a patent granted or published application for a patent for the invention; or
( b ) that any person mentioned as sole or joint inventor in any specification of a patent granted or published application for a patent for the invention ought not to have been so mentioned,
shall be accompanied by a statement in duplicate setting out fully the facts relied upon.
(2) The Controller shall send a copy of the application and statement to —
( a ) every person registered as applicant for or proprietor of the patent (other than the section 17 applicant himself),
( b ) every person who has been identified in the patent application or a statement filed under section 17 (2) (a) as being or being believed to be the inventor or joint inventor of the invention, and
( c ) every other person whose interests the Controller considers may be affected by the application under paragraph (1).
(3) Any recipient of such a copy of the application and statement who wishes to oppose the application shall, within three months of their receipt, file a counter- statement in duplicate setting out fully the grounds of his objection and the Controller shall send a copy of the counter-statement to each of the persons described in this Rule other than any person who is party to the counter-statement.
(4) The Controller may give such directions as he may think fit with regard to the subsequent procedure.
8. The request for the grant of a patent referred to in section 18 shall be made in Form
No. 1.
Name and address of applicant.
8A. (1) Where the documents filed at the Patents Office under section 23(1)(b) do not include the applicant’s name and address, the Controller shall notify the applicant that
same are required.
(2) Where the applicant has been notified under paragraph (1), he, she, they or it shall, before the end of the period of two months starting on the date of the notification, file his, her, their or its name and address; otherwise the Controller shall, subject to paragraph (3), refuse the application.
(3) On a request made to him or her at any time within the period referred to in paragraph (2), the Controller may further extend, by not more than one month, the said period.
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Prescribed period for payment of filing fee — section 18(3).
8B. (1) The prescribed filing fee shall be paid within one month from the date of filing.
(2) Where the filing fee has not been paid within the period in paragraph (1) the Controller shall invite the applicant to pay the filing fee together with the prescribed additional fee within one month from the invitation.
9. The title of the invention appearing in the request for grant shall be the same as the title in the specification.
10. The specification forming part of a patent application in accordance with section
18 shall commence with the title of the invention (which shall be brief and indicate the
matter to which the invention relates), continue with the description of the invention followed by the claim or claims and drawings, if any, in that order.
Translation of description.
10A. (1) Where—
(a) the documents filed at the Patents Office under section 23(1)(c)(i) include a description of the invention in a language other than Irish or English, and
(b) the applicant has not filed a translation into Irish or English of that description with a declaration that it is a complete and accurate translation into Irish or English of that description,
the Controller shall notify the applicant that such a translation with such a declaration is required.
(2) Where the applicant has been notified under paragraph (1), he, she, they or it shall, before the end of the period of two months starting on the date of the notification, file a translation of that description with a declaration; otherwise the Controller sha ll, subject to paragraph (3), refuse the application.
(3) On a request made to him or her at any time within the period referred to in paragraph (2), the Controller may further extend, by not more than one month, the said period.
Reference under section 23(1)(c)(ii).
10B. (1) A reference made under section 23(1)(c)(ii) shall include—
(a) the date of filing of the earlier relevant application, (b) its application number, and
(c) the state in or for which it was made.
(2) Subject to paragraph (3), the copy of the application provided under section 23(9)(c)(ii) (inserted by section 6 of the Patents (Amendment) Act 2006) shall—
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(a) be duly certified by the authority with which it was filed, and
(b) where it is in a language other than Irish or English, be accompanied by—
(i) a translation into Irish or English of that application, or
(ii) a declaration that the description filed under subparagraph (i) of section 23(9)(c) is a complete and accurate translation into Irish or English of the description contained in the application provided under subparagraph (ii) of that provision.
(3) Where the application or a copy of the application is kept at the Office it shall, for the purposes of section 23(9)(c)(ii), be treated as having been filed in accordance with these Rules.
(4) Subject to paragraph (5), the prescribed period for the purpose of section 23(9)(c)(i)
and (ii) is 4 months starting on the date of filing of the application.
(5) Where a divisional application is filed or a new application is filed under section 81 after the end of the period prescribed in paragraph (4), the period prescribed for the purposes of section 23(9)(c)(i)and (ii) shall be two months from the date of filing of the divisional or new application, as the case may be.
11. (1) Subject to section 21 a patent application may contain two or more
independent claims in the same category (product, process, apparatus or use) where it is
not appropriate, having regard to the subject-matter of the application, to cover this subject-matter by a single claim.
(2) Any claim stating the essential features of an invention may be followed by one or more claims concerning particular embodiments of that invention.
(3) If there are several claims, they shall be numbered consecutively in arabic numerals.
12. (1) Drawings forming part of a patent application in accordance with section 18 shall be on sheets the usable surface area of which shall not exceed 26.2 cm x 17 cm.
These sheets shall not contain frames round the usable or used surface. The minimum margins shall be as follows:
top: 2.5 cm left side: 2.5 cm right side: 1.5 cm bottom: 1.0 cm
* Patent (Amendment) Rules 2009
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(2) Drawings shall be executed as follows:
( a ) Drawings shall be executed in durable, black, sufficiently dense and dark, uniformly thick and well defined, lines and strokes without colourings.
( b ) Cross-sections shall be indicated by hatching which should not impede the clear reading of the reference signs and leading lines.
( c ) The scale of the drawings and the distinctness of their graphical execution shall be such that a photographic reproduction with a linear reduction in size to two-thirds would enable all details to be distinguished without difficulty. If, as an exception, the scale is given on a drawing, it shall be represented graphically.
( d ) All numbers, letters, and reference signs, appearing on the drawings, shall be simple and clear. Brackets, circles or inverted commas shall not be used in association with numbers and letters.
( e ) All lines in the drawings shall, ordinarily, be drawn with the aid of drafting instruments.
(f) Elements of the same figure shall be in proportion to each other, unless a difference in proportion is indispensable for the clarity of the figure.
( g ) The height of the numbers and letters shall not be less than 0.32 cm. For the lettering of drawings, the Latin and, where customary, the Greek alphabets shall be used.
( h ) The same sheet of drawings may contain several figures. Where figures drawn on two or more sheets are intended to form one whole figure, the figures on the several sheets shall be so arranged that the whole figure can be assembled without concealing any part of the partial figures. The different figures shall be arranged without wasting space, preferably in an upright
position, clearly separated from one another. Where the figures are not arranged in an upright position, they shall be presented sideways with the top of the figures at the left side of the sheet. The different figures shall be numbered consecutively in arabic numerals, independently of the numbering of the sheets.
( i ) Reference signs not mentioned in the description and claims shall not appear in the drawings, and vice versa. The same features, when denoted by reference signs, shall, throughout the application, be denoted by the same signs.
( j ) The drawings shall not contain text matter, except, when absolutely indispensable, a single word or words such as "water", "steam", "open", "closed", "section on AA", and, in the case of electric circuits and block schematic or flow sheet diagrams, a few short catch words indispensable for understanding.
(3) Flow sheets and diagrams are considered as drawings.
13. (1) The abstract forming part of a patent application in accordance with section 18 shall commence with the title of the invention.
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(2) The abstract shall contain a concise summary of the matter contained in the specification. The summary shall indicate the technical field to which the invention pertains and shall be drafted in a way which allows an understanding of the technical problem, the gist of the solution of that problem through the invention and the principal use or uses of the invention. The abstract shall, where appropriate, contain the chemical formula which, among those contained in the specification, best characterises the invention. It shall not contain statements on the alleged merits or value of the invention or on its speculative application.
(3) The abstract shall preferably not contain more than one hundred and fifty words. (4) If the patent application contains drawings, the applicant shall indicate the figure
or, exceptionally, the figures of the drawings which he suggests should accompany the
abstract when the abstract is published. The Controller may decide to publish one or more other figures if he considers that they better characterise the invention. Each main feature mentioned in the abstract and illustrated by a drawing shall be fo llowed by a reference sign, placed between parentheses.
(5) The abstract shall be so drafted that it constitutes an efficient instrument for purposes of searching in the particular technical field particularly by making it possible to assess whether there is a need for consulting the patent application itself.
Requirements concerning applications relating to micro-organisms.
14. (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]* biological material—
( 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]* biological material itself, be treated for the purposes of the Act as disclosing the invention in such a manner only if the relevant conditions set out in paragraph (2) are satisfied.
(2) The conditions referred to in paragraph (1) are—
( a ) a condition that—
(i) not later than the actual filing date of the application, a [culture]* sample of the [micro-organism]* biological material has been deposited in a depositary institution; and
(ii) the name of the depositary institution, the date when the [culture]* sample 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 designating the State or an application for a European patent designating the State which is treated, by virtue of section 119 and 122 as a patent or an application for a patent
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respectively under the Act, that the corresponding provisions of the Implementing Regulations to the European Patent Convention have been complied with,
and where paragraphs (17) to (19) apply, a further condition that the applicant or proprietor makes a new deposit in accordance with those paragraphs.
(3) Where, except in the case of a divisional application, the information specified in paragraph (2) (a) (ii) is not contained in an application for a patent as filed, it shall be added to the application—
( a ) before the end of the sixteenth month after the date of priority or, if no priority has been claimed, the date of filing of the application;
( b ) where, on a request made by the applicant, the Controller publishes the application before the end of the period specified in section 28 (1), before the date of the request; or
( c ) where the Controller sends notification to the applicant that under section
88 he has received a request by any person for information or inspection of
documents relating to an unpublished application, before the end of one month after his sending to the applicant notification of his receipt of the request;
which ever is the earliest.
(4) The giving of the information specified in paragraph (2) (a) (ii) shall constitute the unreserved and irrevocable consent of the applicant to the depositary institution with which a [culture]* sample (including a deposit which is to be treated as having always been available by virtue of paragraph (18)) is from time to time deposited making the [culture]* sample available on receipt of the Controller'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) shall mention any international agreement under which the [micro-organism]* biological material concerned is deposited.
(6) Save where paragraphs (13) to (16) have effect, a request that the Controller certify a person as a person to whom a depositary institution may make available a sample of a [micro-organism]* biological material —
( a ) before publication of the application for a patent, to a person who has made a request under section 88; and
( b ) at any later time, to any person,
shall be made in Form No. 6 (which shall be filed in duplicate together with the form provided for by the Regulations under the Budapest Treaty). The request shall be accompanied by the prescribed fee.
(7) The Controller shall send copies of the forms lodged with him under paragraph (6)
and of his certificate authorising the release of the sample—
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( a ) to the applicant for, or proprietor of, the patent;
( b ) to the depositary institution; and
( c ) to the person making the request.
(8) A request under paragraph (6) shall include, on the part of the person to whom the request relates, an undertaking for the benefit of the applicant for, or proprietor of, the patent—
( a ) not to make the [culture]* sample, or any [culture]* sample derived from it, available to any other person; and
( b ) not to use the [culture]* sample, or any [culture]* sample derived from it, otherwise than for experimental purposes relating to the subject matter of the invention.
In this paragraph, references to a [culture]* sample derived from a deposited [culture]* sample of a [micro-organism]* biological material are references to a [culture]* sample so derived which exhibits those characteristics of the deposited [culture]* sample essential for the performance of the invention.
(9) Subject as hereinafter provided by this paragraph both undertakings referred to in paragraph (8) shall have effect during any period before the application for a patent has been withdrawn, is deemed to be withdrawn, or is the subject of a final refusal, but excluding, if an application is reinstated, the period before it is reinstated; provided that if a patent is granted on the application, the undertaking at (a) 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 36 (3); provided also that the undertaking set out in (b) shall not have effect after the date of publication in the Journal of a notice that the patent has been granted.
(10) For the purpose of enabling any act specified in section 77 to be done in relation to the [culture]* sample for the service of the State, the undertakings specified in paragraph (8)—
( a ) shall not be required from any Minister of the Government, by himself or by such of his officers, servants or agents as may be authorised in writing by him or any other person acting on his behalf for the purposes of this paragraph; and
( b ) shall not have effect in relation to any such person who has already given them.
(11) An undertaking given pursuant to paragraph (8) may be varied by way of derogation by agreement between the applicant or proprietor and the person by whom it is given.
(12) Where, in respect of a patent to which the undertaking set out in paragraph (8) (a)
has effect—
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( a ) an entry is made in the register under section 68 to the effect that licences are to be available as of right; or
( b ) a compulsory licence is granted under section 70,
that undertaking shall not have effect to the extent necessary for effect to be given to any such licence.
(13) Where, before the preparations for publication of an application for a patent under section 28 have been completed, the applicant gives notice to the Controller on Form No. 7 of his intention that a sample of the [micro-organism]* biological material should be made available only to an expert, the provisions of paragraphs (14) to (16) shall have effect.
(14) The following may be nominated as an expert for the purposes of this Rule—
( a ) any natural person, provided that any person wishing to have a sample of the [micro-organism]* biological material made available furnishes evidence, when applying under paragraph 16, that the person nominated has the approval of the applicant for the patent; or
( b ) any natural person recognised as an expert by the President of the
European Patent Office.
(15) The Controller—
( a ) shall publish with the application notice that the provisions of paragraphs
(14) to (16) have effect; and
( b ) notwithstanding paragraphs (6) to (8) shall not, until the patent is granted or the application has been withdrawn, is deemed to be withdrawn, or is the subject of a final refusal issue any certificate authorising release of a sample otherwise than under paragraphs (14) to (16).
(16) ( a ) Any person wishing to have a sample of the [micro-organism]* biological material made available ("the requester") shall apply to the Controller in Form No. 8 (which shall be filed in duplicate together with the form provided for by the Regulations under the Budapest Treaty) nominating the person ("the expert") to whom he wishes the sample to be made available. The requester shall at the same time file undertakings by the expert in the terms set out in paragraph (8) and shall pay the prescribed fee.
( b ) The Controller shall send a copy of any form lodged with him under this paragraph and his certificate authorising the release of the sample—
(i) to the applicant for the patent,
(ii) to the depositary institution concerned,
(iii) to the requester, and
(iv) to the expert.
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(17) Where the depositary institution with which a deposit or a new deposit of a
[culture]* sample has been made under this Rule—
( a ) notifies the applicant or proprietor that it—
(i) cannot satisfy a request made in accordance with paragraphs (6) or
(16), or
(ii) is not able, lawfully, to satisfy such a request, for the [culture]*
sample to be made available;
( b ) ceases temporarily or permanently to carry out the functions of a depositary institution; or
( c ) ceases for any reason to conduct its activities as a depositary institution in an objective and impartial manner,
then, subject to paragraph (19), the applicant or proprietor may, unless the [culture]* sample has been transferred to another depositary institution which is able to make it available, make a new deposit of a [culture]* sample of that [micro-organism]* biological material.
(18) For the purposes of paragraphs (1) to (5) and of paragraphs (17) and (19), the deposit shall be treated as always having been available if, within three months of the receipt of such notification or of the depositary institution ceasing to perform the functions of a depositary 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 depositary institution with which the new deposit is made a declaration that the [culture]* sample so deposited is of the same [micro- organism]* biological material as was the [culture]* sample originally deposited; and
( c ) requests amendment of the specification under section 32 or section 38, 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 depositary institution with
which the deposit has been made.
(19) The new deposit referred to in paragraph (17)—
( a ) shall, save as provided in the following subparagraph of this paragraph, be made with the same depositary institution as was the original deposit; or
( b ) in the cases referred to in paragraph (17) (a) (ii), (b) and (c) shall be made with another depositary institution which is able to satisfy the request.
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(20) In this Rule "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.
(21) For the purposes of this Rule a "depositary institution" is an institution which, at all relevant times—
( a ) carries out the functions of receiving, accepting and storing [ micro- organism] biological material 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.
Requirements relating to biological material.
14. (1) The specification of an application for a patent, or of a patent, for an invention which involves the use of or concerns biological material—
(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 biological material 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 paragraph (2)(and, where applicable, the further condition where paragraph (17) applies) is or are satisfied and the application as filed contains such relevant information as is available to the applicant on the characteristics of the biological material.
(2) The conditions referred to in paragraph (1) are— (a) a condition that—
(i) not later than the actual filing date of the application, a sample (in this
Rule referred to as the “deposit”) of the biological material concerned
has been deposited in a depositary institution which is able to furnish a sample (in this Rule referred to as the “sample”) of the said biological material,
(ii) the name of the depositary institution and the accession number of the deposit are given in the specification of the application, and
(iii) where the deposit has been deposited by a person other than the applicant, the name and address of the depositor are stated in the application and a document is filed satisfying the Controller that the depositor has authorised the applicant to refer to the deposit in the application and has given his, her, their or its unreserved and irrevocable consent to the deposit being made available to the public in accordance with these Rules,
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and
(b) a condition, in the case of a European patent designating the State or an application for a European patent designating the State which is treated, by virtue of sections 119 and 122 as, respectively, a patent or an application for a patent under the Act, that the corresponding provisions of the Implementing Regulations have been complied with, and where paragraph (17) applies, a further condition that the applicant or proprietor has made a new deposit in accordance with that paragraph.
(3) Where, except in the case of a divisional application, the information specified in paragraph (2)(a)(ii) or (iii) is not contained in an application for a patent as filed, it shall be added to the application—
(a) before the end of the sixteenth month after the date of priority or, if no priority has been claimed, the date of filing of the application,
(b) where, on a request made by the applicant, the Controller publishes the application before the end of the period specified in section 28(1), before the date of the request,
whichever is the earliest.
(4) The giving of the information specified in paragraph (2)(a)(ii) shall constitute the unreserved and irrevocable consent of the applicant to the depositary institution with which the deposit (including a deposit which is to be treated as having always been available by virtue of paragraph (17)) is from time to time deposited to the making available of a sample, on receipt of the Controller's certificate authorising the release, to the person who is named therein as a person to whom a sample 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) shall mention any international agreement under which the deposit concerned is deposited.
(6) Save where paragraphs (13) to (16) have effect, a request may (notwithstanding the revocation or cancellation of the relevant patent or the relevant application for a patent) be made to the Controller to issue a certificate authorising a depository institution to make available a sample at any time after publication of an application for a patent to any person. The request shall be made in Form No. 6 (which shall be filed in duplicate together, in the case of a sample which is deposited under the Budapest Treaty with an international depositary authority, with the form provided for by the Regulations under the Budapest Treaty). The request shall be accompanied by the prescribed fee.
(7) The Controller shall send copies of the forms lodged with him or her under paragraph (6) and of his or her certificate authorising the release of the sample—
(a) to the applicant for, or proprietor of, the patent, (b) to the depositary institution, and
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(c) to the person making the request.
(8) A request under paragraph (6) shall include, 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 deposit, or any material derived from it, available to any other person, and
(b) not to use the deposit, or any material derived from it, otherwise than for experimental purposes relating to the subject matter of the invention.
In this paragraph, references to material derived from a deposit are references to material so derived which exhibits those characteristics of the deposit essential for the performance of the invention.
(9) Subject as provided by this paragraph, both undertakings referred to in paragraph
(8) shall have effect—
(a) during any period before the application for a patent has been withdrawn, is deemed to be withdrawn, or is the subject of a final refusal, but excluding, if an application is reinstated, the period before it is reinstated, and
(b) if a patent is granted on the application, during any period for which the patent is in force and during the period of six months referred to in section
36(3).
(10) For the purpose of enabling any act specified in section 77 to be done in relation to the deposit for the service of the State, the undertakings specified in paragraph (8)—
(a) shall not be required from any Minister of the Government, whether by him or her self or by such of his or her officers, servants or agents as may be authorised in writing by him or her or any other person acting on his or her behalf for the purposes of this paragraph, and
(b) shall not have effect in relation to any such person who has already given them.
(11) An undertaking given pursuant to paragraph (8) may be varied by way of derogation by agreement between the applicant or proprietor and the person by whom it is given.
(12) Where, in respect of a patent to which an undertaking pursuant to paragraph (8)
has effect—
(a) an entry is made in the register under section 68 to the effect that licences are to be available as of right, or
(b) a compulsory licence is granted under section 70, that undertaking shall not have effect to the extent necessary for effect to be given to any such licence.
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(13) Where, before the preparations for publication of an application for a patent under section 28 have been completed, the applicant gives notice to the Controller on Form No. 7 of his, her, their or its intention that a sample should be made available only to an expert, the provisions of paragraphs (14) to (16) shall have effect.
(14) The following may be nominated as an expert for the purposes of this Rule—
(a) any natural person, provided that any person wishing to have a sample made available furnishes evidence, when applying under paragraph (16), that the person nominated has the approval of the applicant for the patent, or
(b) any natural person recognised as an expert by the President of the European
Patent Office.
(15) The Controller—
(a) shall publish with the application notice that the provisions of paragraphs (14) to
(16) have effect, and
(b) notwithstanding paragraphs (6) to (8) shall not— (i) until the patent is granted, or
(ii) where the application has been withdrawn, is deemed to be withdrawn, or is the subject of a final refusal, for 20 years from the date on which the application was filed,
issue any certificate authorising release of a sample otherwise than under paragraphs (14) to (16).
(16) (a) Any person wishing to have a sample made available (“the requester”) shall apply to the Controller in Form No. 8 (which shall be filed in duplicate together, in the case of a deposit which is deposited under the Budapest Treaty with an international depositary authority, with the form provided for by the Regulations under the Budapest Treaty) nominating the person (“the expert”) to whom he, she, they or it wishes the sample to be made available. The requester shall at the same time file undertakings by the expert in the terms set out in paragraph (8) and shall pay the prescribed fee.
(b) The Controller shall send a copy of any form lodged with him or her under this paragraph and his or her certificate authorising the release of the sample—
(i) to the applicant for the patent,
(ii) to the depositary institution concerned, (iii) to the requester, and
(iv) to the expert.
(17) (a) This paragraph applies where—
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(i) a deposit ceases to be available from the institution with which it was deposited because—
(I) the biological material comprising the deposit is no longer viable, or
(II) for any other reason the institution is unable to supply samples,
or
(ii) the depositary institution—
(I) ceases to be a depositary institution for the purposes of this Rule, either entirely or for the kind of biological material to which the deposit belongs, or
(II) discontinues, temporarily or permanently, the performance of its functions as regards deposited biological material,
and no sample of the biological material has been transferred to another depositary institution, from which it continues to be available.
(b) An interruption in availability of the deposit shall be deemed not to have occurred if within a period of three months from the date on which the depositor was notified of the interruption by the depositary institution—
(i) the depositor (or applicant or proprietor if different) makes a new deposit of a sample of that biological material, and
(ii) the applicant or proprietor makes a request for amendment of the specification under section 32 or section 38, as the case may be, so as to indicate the accession number of the new deposit and, where applicable, the name of the depositary institution with which the deposit was made.
(c) In the case provided for in subparagraph (a)(i)(I), the new deposit shall be made with the depositary institution with which the original deposit was made; in the cases provided for in subparagraphs (a)(i)(II) and (a)(ii), it may be made with another depositary institution.
(d) Where, in a case to which subparagraph (a)(ii) applies, no notification of the interruption of availability of the deposit from the depositary institution is received by the depositor within six months from the date of such event, the three month period referred to in subparagraph (b) shall begin on the date on which this event is announced in the Journal.
(e) Any new deposit shall be accompanied by a statement signed by the person making the deposit certifying that the sample of biological material newly deposited is of the same biological material as was the sample originally deposited.
(18) In this Rule—
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“Budapest Treaty” means the Treaty on the International Recognition of the Deposit of
Microorganisms for the purposes of Patent Procedure done at Budapest in 1977, and
“international depositary authority” means a depositary institution which has acquired the status of an international depositary authority as provided for in Article 7 of the Budapest Treaty.
(19) For the purposes of this Rule a “depositary institution” is an institution which, at all relevant times—
(a) carries out the functions of receiving, accepting and storing biological material 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.
15. (1) All documents making up a patent application under section 18 other than the request for grant (specification, drawings and abstract) shall be filed in duplicate and
shall be in the English language.
(1) The specification, drawings and abstract making up a patent application under section 18 shall be filed in duplicate.
(2) All documents making up a patent application shall be so presented as to admit of direct reproduction by photography, electrostatic processes, photo offset and micro- filming, in an unlimited number of copies. All sheets shall be free from cracks, creases and folds. Only one side of the sheet shall be used, except in the case of the request for grant.
(3) All such documents shall be on A4 paper (29.7 cm x 21 cm) which shall be pliable, strong, white, smooth, matt and durable. Subject to the provisions of Rule 12 (2) (h)
and paragraph 10, each sheet shall be used with its short sides at the top and the bottom
(upright position).
(4) Each of the documents making up the patent application (request for grant, specification, drawings and abstract) shall commence on a new sheet. The sheets shall be connected in such a way that they can easily be turned over, separated and joined together again.
(5) Subject to Rule 12 (1) the minimum margins shall be as follows—
top: 2.0 cm left side: 2.5 cm right side: 2.0 cm bottom: 2.0 cm
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(6) The margins of the documents making up the patent specification, when submitted, must be completely blank.
(7) All sheets of the specification, except the drawings, shall be numbered consecutively and such numbering shall be in arabic numerals placed at the top of the sheet, in the middle, but not in the top margin.
(8) All sheets of drawings, when filed, shall be numbered consecutively as a separate series. Such numbering shall be in arabic numerals placed at the top of the sheet, in the middle, but not in the top margin.
(9) The lines of each sheet of the description and of the claims shall preferably be numbered in sets of five, the numbers appearing on the left side, to the right of the margin.
(9) The lines of each sheet of the description and of the claims shall be—
(a) numbered in sets of five, the numbers appearing on the left side, to the right of the margin, or
(b) separated into consecutive paragraphs, the paragraph number appearing on the left side, to the right of the margin.
(10) The request for grant, the specification and the abstract shall be typed or printed. Only graphic symbols and characters and chemical or mathematical formulae may, if necessary, be written by hand or drawn. The typing shall be 1½ spaced. All text matter shall be in characters, the capital letters of which are not less than 0.21 cm high, and shall be in a dark indelible colour.
(11) The request for grant, the description, the claims and the abstract shall not contain drawings. The description, the claims and the abstract may contain chemical or mathematical formulae. The description and the abstract may contain tables. The claims may contain tables only if their subject-matter makes the use of tables desirable.
(12) Units of measurement shall be expressed in SI units in accordance with current EC Directives. Temperature shall be expressed in degrees Celsius. Where, exceptionally, different units are used those units shall also be expressed in terms of such SI units. For other physical values not covered by such SI system of units, the units recognised in international practice shall be used. For mathematical formulae the symbols in general use, and for chemical formulae the symbols, atomic weights and
molecular formulae in general use shall be employed. In general, use should be made of
technical terms, signs and symbols generally accepted in the field in question.
(13) The terminology and the signs shall be consistent throughout the application. (14) Each sheet shall be legible and reasonably free from erasures and shall be free
from alterations, overwritings and interlineations.
(15) If a formula is used in the description or claims a copy thereof, prepared in the same manner as drawings, shall be furnished if the Controller so directs.
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16. (1) The provisions of Rules 12 and 15 shall apply to documents replacing
documents making up a patent application.
(2) All documents other than those referred to in paragraph (1) shall normally be typewritten or printed and shall have a margin of about 2.5 cm on the left -hand side of each page and shall comply with Rule 15 (3).
(3) Such documents as must be communicated to other persons or as relate to two or more patent applications or patents, shall be filed in a sufficient number of copies.
17. Section 21 shall be construed as permitting in particular that one and the same patent application may include—
( a ) in addition to an independent claim for a product, an independent claim for a process specially adapted for the manufacture of the product, and an independent claim for a use of the product; or
( b ) in addition to an independent claim for a process, an independent claim for an apparatus or means specifically designed for carrying out the process; or
( c ) in addition to an independent claim for a product, an independent claim for a process specially adapted for the manufacture of the product, and an independent claim for an apparatus or means specifically designed for carrying out the process.
Prescribed period in relation to late or non-filing of drawings.
18. The period prescribed for the purposes of section 23 (3) and (4) shall be one month calculated from the date on which the Office sends out notification to the applicant that
the drawing has been filed later than the date which is, by virtue of section 23 (1), to be treated as the date of filing of the application or, as the case may be, that it has not been
filed.
Prescribed period in relation to late or non-filing of drawings.
18. The period prescribed for the purposes of section 23(6) and (7) shall be two months,
calculated from the date on which the Office sends out notification to the applicant that the drawing or part of a description has been filed, later than the date which is, by virtue of section 23(1), to be treated as the date of filing of the application or, as the case may be, that it has not been filed.
Prescribed period for filing claims and abstract.
19. (1) The period prescribed for filing the claims and abstract for the purposes of section 23 (5) shall be twelve months from the date of filing or, if priority has been claimed, from the date of priority.
(2) Where a divisional application is filed, or a new application is filed under section
81, after the end of the period of twelve months prescribed in paragraph (1), the
requirements of that provision shall be complied with at the actual filing date of the divisional or new application as the case may be.
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Prescribed period for filing claims and abstract.
19. (1) The period prescribed for filing the claims and abstract for the purposes of section 23(9) shall be twelve months from the date of filing or, if priority has been
claimed, from the date of priority.
(2) Where a divisional application is filed more than nine months after the date of filing of the earlier application or, if priority has been claimed after the date of priority of the earlier application, the period prescribed for filing the claims and abstract for the purposes of section 23(9) shall be three months from the date of filing of the divisional application.
(3) Where a new application is filed under section 81 after the end of the period of 12
months prescribed in paragraph (1), the requirements of that provision shall be complied with at the actual filing date of the new application.
Prescribed requirements for a request under section 23(8)(b).
19A. (1) A request made under section 23(8)(b) shall—
(a) include sufficient information to identify where in the earlier relevant application or applications the missing part of the description or missing drawing filed under section 23(6) or (7), as the case may be, was included, and
(b) be made before the end of the period prescribed for the purpose of section
23(6) or (7), as the case may be.
(2) Any request under section 23(8)(b) shall be considered never to have been made where—
(a) the earlier relevant application or applications do not contain every missing
part filed under section 23(6) or (7), as the case may be, or
(b) the applicant fails to furnish to the Office copies of all earlier relevant applications, duly certified by the authority with which they were filed, before the end of the relevant period.
(3) Paragraph (2)(b) does not apply in respect of an earlier relevant application where that application or a copy of the application is kept at the Office.
(4) In this Rule the relevant period means—
(a) the period of sixteen months starting on the declared priority date, or
(b) the period of four months starting on the date the request was made under section 23(8),
whichever first expires.
(5) This Rule applies only to applications filed after the date of the making of these
Rules. Rule 19 will continue to apply to applications received prior to that date.
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20. (1) A divisional application within the meaning of section 24 may be filed—
( a ) in a case where the divisional application is filed after the earlier application has been amended under the provisions of section 29 (4), section 30 (4) or (5) or section 32, within two months of such amendment; and
( b ) in a case which does not fall within (a) of this paragraph, at any time after filing of the earlier application;
provided that a divisional application may not be filed after the earlier application has been refused, is withdrawn, is deemed to be withdrawn or after the applicant has been requested to pay has paid the fee for the grant of a patent in respect of the invention to which that application relates.
(2) Where possible, the description and drawings of the earlier application and the divisional application shall relate only to the matter for which protection is sought by each such application respectively. However, when it is necessary for an application to describe the matter for which protection is sought by another application, it shall include a reference by number to that other application.
21. (1) A period of 12 months, commencing on the day following the date of filing of the previous application whose priority is claimed, is hereby prescribed for the purpose
of section 25 (1).
(2) If an application which claims the priority of a previous application is filed later than the period referred to in paragraph 1, the right of priority shall be lost unless—
( a ) the application is filed not later than 14 months from the date of filing of the earlier application and is accompanied by the prescribed additional fee; and
( b ) the applicant satisfies the Controller by evidence that, despite all due care, the application could not have been filed within the period referred to in paragraph (1).
Declaration of priority and priority documents.
22. (1) The declaration of priority based on a previous application referred to in
section 26 (1) shall be made in Form No. 1 and shall indicate the date of the previous filing, the state in or for which it was made and the file number, if available.
(2) A copy of the previous application as referred to in section 26 (1) shall be filed before the end of the sixteenth month after the date of priority; provided that this period may be extended by a period not exceeding one month on a request made to the Controller before the expiry of the extension period, accompanied by the prescribed
fee. The copy must be certified as an exact copy of the previous application (by the
authority which received the previous application) or otherwise verified to the satisfaction of the Controller, and shall be accompanied by a certificate issued by that authority stating the date of filing of the previous application.
(3) Where a translation of the previous application is required under section 26 (1) the translation must be filed within twenty one months after the date of priority.
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(4) Where the previous application is an application under the Act or under the Act of
1964 or an international application for a patent designating the State which is filed at the Office, the applicant may, instead of filing a copy of the previous application, request the Controller, before the end of the time limit mentioned in paragraph (3), to include such a copy with the patent application upon payment of the prescribed fee.
(5) Where a divisional application or a new application under section 81 is filed after the period of sixteen months referred to in paragraph (2) the requirements of paragraph (2) shall be complied with at the actual filing date of the divisional or new application as the case may be, and where such an application is filed after the period prescribed in
paragraph (3), the provisions of that latter paragraph shall similarly be complied with at
the actual filing date of the application in question.
(6) In the case of an application which is an application for a European patent designating the State which, by virtue of section 122 is to be treated as an application for a patent under the Act, the requirements of paragraphs (1) to (4) shall be treated as having been complied with to the extent that the requirements of rule 38 (1) to (3) of the Implementing Regulations to the European Patent Convention have been fulfilled.
Declaration of priority and priority documents.
22. (1) The declaration of priority based on a previous application referred to in section
26(1) shall be made on Form No. 1 and shall indicate the date of the previous filing, the state in or for which it was made and the file number, if available.
(2) The declaration of priority may be made subsequently provided it is made within sixteen months from the earliest priority date claimed.
(3) The applicant may correct the declaration of priority within sixteen months from the earliest priority date claimed, or, where the correction would cause a change in the earliest priority date claimed, within sixteen months from the corrected earliest priority date, whichever sixteen month period expires first, provided that such a correction may be submitted not later than four months from the date of filing.
(4) The applicant may not, however, request the addition or correction of a priority claim where the applicant has made a request under section 28(1) for early publication, unless that request for early publication is withdrawn before the technical preparations for publication of the application have been completed.
(5) A copy of the previous application as referred to in section 26(1) shall be filed before the end of the sixteenth month after the date of priority; provided that this period may be extended by the Controller if, upon request made to him or her within one month after the expiry of the said period, accompanied by the prescribed fee, he or she thinks fit. The said copy must be certified as an exact copy of the previous application (by the authority which received the previous application) or otherwise verified to the satisfaction of the Controller, and shall be acco mpanied by a certificate issued by that authority stating the date of filing of the previous application.
(6) A translation of the previous application as required under section 26(1) may only be requested where such translation would be relevant to the determination of the validity of the patent where relevant prior art has been published between the priority date and the filing date.
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(7) Where a translation is requested in accordance with paragraph (6) it must be filed within twenty one months after the date of priority.
(8) Where the previous application is an application under the Act or an international application for a patent designating the State which is filed at the Office, the applicant may, instead of filing a copy of the previous application, request the Controller, before the end of the period referred to in paragraph (6), to include such a copy with the patent application upon payment of the prescribed fee.
(9) Where a divisional application or a new application under section 81 is filed after the period of sixteen months referred to in paragraph (5), the requirements of paragraph (5) shall be complied with at the actual filing date of the divisional or new application, as the case may be, and where such an application is filed after the period referred to in paragraph (6), the provisions of that latter paragraph shall apply at the actual filing date of the application in question.
(10) In the case of an application which is an application for a European patent designating the State which, by virtue of section 122 is to be treated as an application for a patent under the Act, the requirements of paragraphs (1) to (8) shall be treated as having been complied with to the extent that the requirements of Rule 52(1) to (4) and Rule 53(1) and (3) of the Implementing Regulations have been fulfilled.
23. (1) The application as published in accordance with section 28 shall include the description, claims, drawings and abstract as filed. If before the termination of t he
technical preparations for publication of the application the claims have been amended pursuant to Rule 31, the new or amended claims shall be included in the publication in
addition to the original claims.
(2) The application as published shall where possible include the statement as to inventorship referred to in section 17 (2) and, if priority is claimed, the copy of the previous application referred to in section 26 (1). If these documents, including any necessary translations, are not published with the application, they shall be published as soon as practicable thereafter.
(3) The Controller may determine when the technical preparations for publication of the application are to be treated as having been completed.
Rules for Part II, Chapter IV of the Act.
24. (1) The request to the Controller by the applicant to cause a search to be
undertaken under section 29 (1) shall be accompanied by the prescribed fee and shall be submitted not later than twenty one months from the date of filing of the application or, if priority has been claimed, from the date of priority; provided that where the application is a divisional application filed on or after the expiry of twenty one months from the date of filing (or date of priority as the case may be) of the earlier application,
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the request to the Controller to cause a search to be undertaken shall be submitted on the actual filing date of the divisional application.
(2) The search shall be conducted and the search report prepared in accordance with arrangements made for that purpose approved by the Minister.
(3) If, under the provisions of section 29 (2), the applicant wishes that a search be carried out in relation to an additional invention he shall submit a request to that effect to the Controller, accompanied by the prescribed fee. The request shall be submitted within one month of the date of issue by the Controller to the applicant of the copy of the search report relating to the first invention.
(3A) The prescribed period for section 29(3) is as follows:
(a) Two months from the date of issue of the search report to the applicant, in cases where the application has been published under section 28 or is due to be so published within two months.
(b) Eighteen months from the date of filing or, where priority has been claimed, from the date of priority, in cases where the application is not one to which subparagraph (a) applies.
(4) Within two months of the date of issue by the Controller to the applicant of a copy of a search report the applicant shall notify the Controller if he wishes to withdraw the application; and if the application is not so withdrawn the Controller shall publish the report.
(5) Within four months of the date of issue by the Controller to the applicant of a copy of a search report the applicant shall, unless the application is withdrawn, comply with the requirements of section 29 (4).
(6) The time period prescribed in paragraph (1) may be extended by the Controller by not more than three months if an application for the extension required (accompanied by the prescribed fee) is submitted to the Controller at any time within the extended period specified in the request.
25. Where so requested by the Controller under section 30 (2), the applicant shall, within a period of six months from the request, furnish a statement of all the foreign
countries, if any, in which applications for protection for the invention, which is the subject of the patent application, have been made (including applications under
conventions or treaties), together with a copy of the report showing the result of any search made in relation to such applications. Within the same period the applicant shall
also, where so requested by the Controller, furnish a statement as to whether such applications are still pending, have been accepted, are withdrawn or deemed to have been withdrawn or have been refused.
Prescribed states, etc.
26. The following states namely the United Kingdom and Germany and the European
Patent Convention and the Patent Co-operation Treaty are hereby prescribed for the purpose of the statement referred to in section 30 (1).
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Prescribed foreign states etc.
26. (1) The following foreign states are prescribed for the purpose of the statement referred to in section 30(1): the United Kingdom, Germany and any other state where a
search for the application relating to the same invention has been carried out by the
European Patent Office.
(2) The European Patent Convention and the Patent Cooperation Treaty are prescribed for the purpose of the statement referred to in section 30(1).
27. (1) The evidence referred to in section 30 (1) in relation to the invention for which
a patent is sought shall be either—
( a ) where an application for a patent is also made under the provisions of the European Patent Convention, a copy of the published European patent application and the related European Search Report or a copy of the published specification of the granted European patent in respect of the said invention; or
( b ) where an application for a patent is also made under the provisions of the Treaty, a copy of the published International Application and the related International Search Report in respect of the said invention; or
( c ) where an application for a patent is also made to the United Kingdom Patent Office, a copy of the published application for the patent and the related search report or a copy of the published specification of the granted patent in respect of the said invention; or
( d ) where an application for a patent is also made to the Deutsches Patentamt, a copy of the published application for the patent and the related search report
or a copy of the published specification of the granted patent [Patentschrift] in respect of the said invention; or
( e ) where an application for a patent is also made to the Patent Office (or other authority competent for the grant of patents) of a state on whose behalf such applications are the subject of searches carried out by the European Patent Office, a copy of the published application for the patent and the search report thereon prepared by the European Patent Office.
(2) On submitting evidence the applicant shall pay the prescribed fee. (3) The time for submitting evidence shall be—
( a ) in the case of the evidence referred to in paragraph (1) (a), within two months of the publication of the search report or of the specification,
( b ) in the case of the evidence referred to in paragraph (1) (b), within two months of publication of the search report,
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( c ) in the case of the evidence referred to in paragraph (1) (c), within two months of the publication of the application or of the receipt by the applicant of the search report (whichever is the later), or within two months of the publication of the specification,
( d ) in the case of the evidence referred to in paragraph (1) (d), within two months of the publication of the search report or of the specification,
( e ) in the case of the evidence referred to in paragraph (1) (e), within two months of the publication of the search report;
provided that where the application is a divisional application, the evidence shall be submitted on the actual filing date of that application if it has already been published before that date.
(4) The Controller may grant an extension of the time prescribed in paragraph (3) if a request for such extension, accompanied by the prescribed fee, is made at any time within the extended period specified in the request.
28. (1) Within two months of the date the Controller receives evidence under Rule 27 the applicant shall notify the Controller if he wishes to withdraw the application; and if
the application is not so withdrawn the Controller shall publish the evidence.
(2) Following receipt by him of evidence under Rule 27 the Controller, unless the application is withdrawn, shall notify the applicant that the provisions of section 30 (4) or (5) as appropriate shall be complied with within four months of the date of the notification.
(3) Any amendment or statement under section 29 (4) or section 30 (4) and (5) shall be submitted by a duly authorized patent agent. The agent shall submit a statement that no amendment to the application is considered necessary or that amendments (details of which must accompany the statement) are required, whichever if appropriate. Repealed
2009
29. The period referred to in section 31 (3) for payment of the fee for grant of a patent
shall be four months from the date of the request to pay the said fee; provided that this period may be extended for a further period of three months if a request for such extension accompanied by the prescribed additional fee is made at any time within the extended period specified in the request.
30. An application under section 32 to amend the request for the grant of a patent shall state the number and date of the patent application and the reasons for desiring to
amend the request, and shall be accompanied by a copy of the original request showing the desired amendment in red ink and by the prescribed fee. The Controller may call for
such evidence in support of the amendment as he may require.
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31. (1) Before the time for making any amendments provided for under sections 29 and 30 the applicant may, under section 32, amend once the description, claims and drawings of his own volition.
(2) After making any amendments under sections 29 and 30 or, if no amendments are made in accordance with the provisions of these sections, after the time within which such amendments could have been made has expired, any amendment to the description, claims or drawings which the applicant desires to make of his own volition may only be made with the consent of the Controller following the filing of an application for leave to amend.
(3) Requests to amend under paragraphs (1) and (2) shall state the reasons for desiring the amendment, and shall be accompanied by a copy of the description, claims or drawings, as the case may be, showing the desired amendment in red ink and by the prescribed fee.
(4) If required by the Controller, the applicant shall file a new specification or drawings following amendments made under paragraphs (1) and (2), or under sections
29 and 30, and such specification or drawings shall be prepared in accordance with
Rules 10, 11, 12 and 15.
(5) The description, claims or drawings may not be amended by the applicant of his own volition except as provided in paragraphs (1) to (4).
32. A certificate of grant of a patent, in Form No. 3, shall be issued to the applicant
upon grant.
33. (1) The prescribed application renewal fee shall be due in respect of each year that
an application is pending following the expiry of the second year from the date of filing of the application and shall be payable on or before the last day of the month in which such year commences.
(1) The prescribed application renewal fee shall be due in respect of each year during any part of which an application is pending commencing with the fee prescribed in respect of the third year from the date of the filing of the patent application and shall be payable on or before the last day of the month in which that year commences.
(2) A renewal fee may not be validly paid more than four months before the date on which it falls due.
(3) When a renewal fee has been paid in compliance with the provisions of section 35 and this Rule the Controller shall issue a certificate that the fee has been duly paid.
(4) Where a divisional application is filed after the expiration of the second or any succeeding year from the date of filing of the earlier application, the renewal fee due in respect of any such year or years (on the basis that such application is deemed to have been filed on the date of filing of the earlier application) shall be paid at the time such
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application is filed within three months of the date of filing of the divisional application.
Application for Reinstatement.
33A. (1) The time limit for making a request under section 35A for reinstatement shall be the earlier to expire of the following periods:
(a) two months from the date on which the removal of the cause of non- compliance occurred, or
(b) twelve months starting from the date the application was terminated. (2) The request for reinstatement shall state—
(a) the name and address of the applicant for reinstatement and the number of the patent application in question, and
(b) the circumstances which led to the failure to comply with the time limit, and shall be accompanied by the prescribed fee and by evidence verifying any statement made in relation to the circumstances mentioned in subparagraph (b).
(3) Where upon consideration of the evidence provided under paragraph (2) it does not appear to the Controller that a case for a reinstatement order has been made, he or she shall notify the applicant accordingly and unless within one month the applicant requests to be heard in the matter the Controller shall refuse the application.
(4) If the applicant requests a hearing within the time allowed, the Controller, after giving the applicant the opportunity to be heard, shall determine whether the request for reinstatement may proceed to advertisement in accordance with section 35A(5) or whether it shall be refused. If the application has not been published under section 28, the Controller shall determine whether the request for reinstatement should be allowed or refused.
Opposition to reinstatement of application.
33B. (1) At any time within 2 months of the advertisement of the application under section 35A(5), any person may give notice of opposition to the application.
(2) Such notice shall be furnished in duplicate and shall state— (a) the name and address of the opponent,
(b) the number of the application concerned, and
(c) the ground or grounds upon which reinstatement is opposed, and shall be accompanied by the prescribed fee and a statement setting out fully the facts on which the opponent relies.
(3) Upon notice of opposition being given to him or her, the Controller shall send to the opponent a copy of the application and the accompanying evidence submitted to him or her.
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(4) A copy of the notice of opposition and the statement of the opponent shall also be sent by the Controller to the applicant.
(5) Within three months of the receipt of such copies, the applicant shall, if he, she, they or it wishes to continue with the application for reinstatement, file a counter- statement in duplicate setting out fully the grounds upon which the opposition is resisted, and the Controller shall send a copy of the counter-statement to the opponent.
(6) The Controller may give such directions as he or she thinks fit with regard to the subsequent procedure.
(7) Where the Controller reinstates the application after a notice was published under section 35A(5) he or she shall advertise in the Journal that he or she has reinstated the application.
Rules for Part II, Chapter V of the Act.
34. (1) Patent renewal fees shall be due annually commencing with the fee prescribed in respect of the third year from the date of filing of the patent application.
(2) The prescribed fee in respect of each year shall be payable on or before the last day of the month in which that year commences; provided that where the certificate of grant of a patent is issued after the expiration of the second or any succeeding year the
renewal fee or fees due in respect of any such year or years (less the amount of the fee paid under the immediately preceding Rule in respect of any such year or years) may be paid at any time within three months from the date of issue of the certificate of grant; provided also that in the case of a European patent designating the State, renewal fees shall only be payable in respect of the years which follow that in which the mention of the grant of that patent is published in the European Patent Bulletin and where a
renewal fee is due within two months of such publication it may be paid within those two months.
(3) A renewal fee may not be validly paid more than four months before the date on which in falls due. Form No. 4, duly completed, shall be filed with the payment.
(4) On due compliance with the terms of the preceding paragraphs, the Controller shall issue a certificate that the prescribed payment has been duly made.
(5) Where the period for payment of a renewal fee pursuant to paragraphs (1) and (2) has expired, the Controller shall, not later than six weeks after the last day for payment under those paragraphs and if the fee still remains unpaid, send to the proprietor of the patent a notice reminding him that payment is overdue and of the consequences of non- payment.
(6) The notice under paragraph (5) shall be sent to the address for service as notified in accordance with Rule 92.
Patent (Amendment) Rules 2009
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35. (1) An application under section 37 for restoration of a patent or an application for a patent which has lapsed shall state—
( a ) the name and address of the applicant for restoration and the number of the patent or application in question;
( b ) the amount of the renewal fee due;
( c ) the date by which the fee should have been paid;
( d ) the circumstances which led to the failure to pay the fee,
and shall be accompanied by the prescribed fee and by evidence verifying any statement made in relation to the circumstances referred to in (d).
(2) If, upon consideration of the evidence, the Controller is not satisfied that a prima facie case for an order under section 37 has been made out, he shall notify the applicant accordingly and, unless within one month the applicant requests to be heard in the matter, the Controller shall refuse the application.
(3) If the applicant requests a hearing within the time allowed, the Controller, after giving the applicant an opportunity of being heard, shall determine whether the application may proceed to advertisement or whether it shall be refused.
36. (1) At any time within two months of the advertisement of the application under
section 37 (4) any person may give notice of opposition thereto. (2) Such notice shall be furnished in duplicate and shall state—
( a ) the name and address of the opponent;
( b ) the number of the patent or application concerned;
( c ) the ground or grounds upon which restoration is opposed;
and shall be accompanied by the prescribed fee and by a statement in duplicate setting out fully the facts upon which the opponent relies.
(3) Upon notice of opposition being given the Controller shall send to the opponent a copy of the application and accompanying evidence.
(4) A copy of the notice and the statement of the opponent shall be sent by the
Controller to the applicant.
(5) Within three months of the receipt of such copies, the applicant shall, if he wishes to continue with his application for restoration, file a counter-statement duplicate setting out fully the grounds upon which the opposition is resisted; and the Controller shall send a copy of the counter-statement to the opponent.
(6) The Controller may give such directions as he may think fit with regard to the subsequent procedure.
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37. If the Controller decides to restore the patent or patent application he shall notify the applicant accordingly and require him under section 37 (6) to pay the unpaid
renewal fees together with the prescribed additional fee.
Conditions of restoration.
38. (1) For the protection of a person who between the date the patent or the patent
application lapsed and the date of the application for restoration began in good faith to do an act which would constitute an infringement of the patent or of the application if it had been in force or made in good faith effective and serious preparations to do such an act, every order of the Controller restoring a patent or a patent application shall, for the purposes of section 37 (7) (b), have the effect that once the order comes into force, it shall be subject to the conditions that any such person shall have the right—
( a ) to continue to do or, as the case may be, to do that act himself; and
( b ) if it was done or preparations had been made to do it in the course of a business, to assign the right to do it or to transmit that right on his death or, in the case of a body corporate on its dissolution, to any person who acquires that part of the business in the course of which the act was done or preparations had been made to do it, or to authorise it to be done by any partners of his for the time being in that business; and the doing of that act by virtue of this paragraph shall not amount to an infringement of the patent or of the patent application concerned.
(2) The rights mentioned in paragraph (1) shall not include the right to grant a licence to any person to do an act so mentioned.
(3) Where a product is disposed of by any person to another in exercise of a right conferred by paragraph (1), that other and any other person claiming through him shall be entitled to deal with the product in the same way as if it had been disposed of by a sole registered proprietor. Repealed 2009
39. (1) An application under section 38 (1) by the proprietor of a patent for leave to
amend the specification of the patent shall be accompanied by the prescribed fee and by a copy of the specification showing the desired amendment in red ink, and shall be advertised by publication of the application and the nature of the proposed amendment in the Journal and in such other manner, if any, as the Controller may direct.
(2) Any person wishing in accordance with section 38 (5) to oppose an amendment which has been advertised under section 38 (1) or (2), shall, within three months from the date of the advertisement, give notice to the Controller.
(3) Such notice shall be in duplicate and shall state— ( a ) the name and address of the opponent;
( b ) the number of the specification in question;
( c ) the reasons, in detail, for opposing the amendment;
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and shall be accompanied by the prescribed fee and by a statement, in duplicate, setting out fully the facts upon which the opponent relies and the relief which he seeks. A copy of the notice and the statement shall be sent by the Controller to the applicant.
(4) Within three months of the receipt of such copies, the proprietor shall, if he wishes to contest the opposition, file a counter-statement in duplicate setting out fully the grounds upon which the opposition is contested; and the Controller shall send a copy of the counter-statement to the opponent.
(5) The Controller may give such directions as he may think fit with regard to the subsequent procedure.
(6) Where leave to amend a specification is given, the applicant shall, if the Controller so requires and within a time to be fixed by him, file a new specification as amended, which shall be prepared in accordance with Rules 10, 11, 12 and 15.
40. (1) Notice to the Controller of an offer to surrender a patent under section 39 shall state—
( a ) the name and address of the proprietor; ( b ) the number of the patent in question;
( c ) the proprietor's reasons for making the offer;
and shall be accompanied by a declaration that no action for infringement or proceeding for the revocation of the patent is pending in any Court.
(2) The Controller shall advertise the offer in the Journal.
(3) At any time within three months from the advertisement any person may give
notice of opposition to the Controller. Such notice shall be in duplicate and shall state—
( a ) the name and address of the opponent; ( b ) the number of the patent in question;
( c ) the opponent's reasons for opposing surrender;
and shall be accompanied by a statement, in duplicate, setting out fully the facts upon which the opponent relies and the relief which he seeks, and by the prescribed fee.
(4) The Controller shall send a copy of the notice and of the statement to the proprietor of the patent.
(5) Within three months of the receipt of such copies, the proprietor of the patent shall, if he wishes to continue with the surrender, file a counter-statement in duplicate setting out fully the grounds upon which the opposition is resisted; and the Controller shall
send a copy of the counter-statement to the opponent.
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(6) The Controller may give such directions as he may think fit with regard to the subsequent procedure.
Rules for Part II, Chapter VIII of the Act.
41. (1) An application to the Controller under section 57 for the revocation of a patent shall be in duplicate and shall be accompanied by a statement in duplicate setting out
fully the grounds for revocation, the facts upon which the applicant relies and the relief which he seeks and the prescribed fee. Any documents upon which the applicant relies
in support of the application shall be furnished in duplicate with the application.
(2) The Controller shall send a copy of the application and statement and any supporting document to the proprietor of the patent.
(3) Within three months of the receipt of such copies, the proprietor of the patent shall, if he wishes to contest the application, file a counter-statement in duplicate setting out fully the grounds upon which the application is contested; and the Controller shall send
a copy of the counter-statement to the applicant.
(4) The applicant may, within three months of the receipt of the copy of the counter- statement, file evidence in support of his case and shall send a copy of the evidence to the proprietor.
(5) Within three months of the receipt of the copy of the applicant's evidence or, if the applicant does not file any evidence, within three months of the expiration of t he time within which such evidence might have been filed, the proprietor of the patent may file evidence in support of his case and shall send a copy of that evidence to the applicant; and, within three months of the receipt of the copy of the proprietor's evidence, the applicant may file further evidence confined to matters strictly in reply and shall send a copy of it to the proprietor.
(6) No further evidence shall be filed by either party except by leave or direction of the Controller.
(7) The Controller may give such directions as he may think fit with regard to the subsequent procedure.
42. If, in proceedings before the Controller under section 57, the proprietor of a patent
offers to surrender it under section 39, the Controller shall, in deciding whether costs should be awarded to the applicant for revocation, consider whether proceedings might have been avoided if the applicant had given reasonable notice to the proprietor before the application was filed.
43. Where it appears to the Controller in accordance with section 60 (1) or (2) that a patent ought to be revoked, the proprietor of the patent shall be so notified and afforded
an opportunity, within a period of three months of such notification, of making observations and of amending the specification of the patent.
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Rules for Part III of the Act.
44. The request for the grant of a short-term patent shall be made in Form No. 1.
45. (1) A request to the controller under section 66 (1) (a) or (6) shall be accompanied
by the fee prescribed under Rule 24 for the purpose of section 29.
(2) For the purpose of section 66 (6), any person who proves to the satisfaction of the
Controller—
(i) that there are grounds to suspect that the invention, the subject of the short-term patent, is not new or is clearly lacking an inventive step, and
(ii) that because of the person's legitimate business interests it would, in all the circumstances, be reasonable that a search report be prepared,
may request the Controller to cause a search report to be prepared. The request shall set out fully the nature of the interest of the person making it. The Controller may call for such further information as he may require.
Rules for Part IV of the Act.
46. An application under section 68 (1) for an entry in the register that licences of right are available shall be accompanied by evidence verifying that the applicant is not
precluded by contract from granting licences under the patent and by the prescribed fee.
47. (1) An application under section 68 (2) for the settlement of the terms of a licence
shall be made in duplicate and shall state—
( a ) the name and address of the applicant; ( b ) the number of the patent in question;
( c ) whether the applicant is the proprietor of the patent, the holder of an existing licence, or a person requiring a licence;
( d ) whether an order for the exchange of an existing licence for a licence of right is required;
and shall be accompanied by a statement, in duplicate, setting out fully the facts upon which the applicant relies, and the terms of the licence which he is prepared to accept or grant, and by the prescribed fee.
(2) A copy of the application and statement shall by sent by the Controller to the proprietor of the patent or the person requiring a licence, as the case may be, who, if he does not agree to the terms set out in the statement, shall, within three months of the
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receipt of such copies, file a counter-statement in duplicate setting out fully the grounds of his objection and the Controller shall send a copy thereof to the applicant.
(3) The Controller shall give such directions as he may think fit with regard to the subsequent procedure.
48. (1) An application under section 69 (1) for the cancellation of an entry shall state
the name and address of the applicant and the number of the patent in question, and shall be accompanied by—
( a ) a declaration that there is no existing licence under the patent or that all licensees consent to the application;
( b ) evidence verifying the said declaration;
( c ) the prescribed application fee and the balance of all renewal fees which would have been payable if the entry had not been made.
(2) An application under section 69 (2) for the cancellation of an entry shall be made within three months after the making of the relevant entry and shall state the name and address of the applicant and that the entry is and was at the time of its making contrary to a contract in which the applicant is interested, and shall be accompanied by a statement, in duplicate, setting out fully the nature of the applicant's interest and the facts upon which he relies, and by the prescribed fee.
49. (1) Every application under section 69 (1) or (2) shall be advertised in the Journal,
and the period within which notice of opposition to the cancellation of an entry may be given under section 69 (5) shall be three months after the advertisement.
(2) Notice of opposition shall be given in duplicate and shall state the name and address of the opponent and the number of the patent in question, and shall be accompanied by a statement, in duplicate, setting out fully the nature of the opponent's interest (if he is not the proprietor of the patent) and the facts upon which he relies, and by the prescribed fee.
(3) A copy of the notice and of the statement shall be sent by the Controller to the applicant for cancellation of the entry and thereafter the Controller may give such directions as he thinks fit with regard to the subsequent procedure.
(4) Where the Controller cancels the entry pursuant to section 69 (3), the proprietor of the patent shall, within two months from the cancellation of the entry, pay a sum equal to the balance of all renewal fees which would have been payable if the entry had not been made.
50. An application for a compulsory licence or for an entry in the register under
section 70 (1) or 72 (1) shall state—
( a ) the name and address of the applicant;
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( b ) the number of the patent in question;
( c ) whether the application is for a licence, or an entry in the register;
( d ) the nature of the applicant's interest, the facts upon which he relies, and the grounds upon which the application is made;
and shall be accompanied by evidence verifying the statements in the application, and by the prescribed fee.
51. (1) If upon consideration of the evidence furnished under Rule 50 the Controller is
not satisfied that a prima facie case has been made out for the making of an order, he shall notify the applicant accordingly, and unless within one month the applicant requests to be heard in the matter the Controller shall refuse the application.
(2) If the applicant requests a hearing within the time allowed, the Controller, after giving the applicant an opportunity of being heard, shall determine whether the application may proceed to advertisement or whether it shall be refused.
(3) Before the application is advertised the Controller shall direct the applicant to serve copies of the application upon the proprietor of the relevant patent and any ot her persons appearing from the register to be interested in the patent.
52. (1) The time within which notice of opposition under section 73 (3) may be given
shall be three months after the advertisement of the application under section 73 (2). (2) A notice of opposition shall state—
( a ) the name and address of the opponent; ( b ) the number of the patent in question;
( c ) the nature of the opponent's interest and his grounds for opposing the application;
and shall be accompanied by evidence verifying the statements in the notice, and by the prescribed fee.
(3) The Controller shall notify the applicant of any notice of opposition under section
73 and thereafter may give such directions as he thinks fit with regard to the subsequent
procedure.
Rules for Part VI of the Act.
53. Where the Controller orders that a new application may be made under section 81
(4), it shall be made within three months calculated from the day on which the time for appealing from that order expires without an appeal being brought or, where an appeal is brought, from the day on which it is finally disposed of.
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54. Where an order referred to in section 82 (1) is made, a request under section 82 (2)
for the grant of a non-exclusive licence to continue using or, as the case may be, to use the invention shall, if made by any previous proprietor, be made within two months, and in the case of any licensee, four months, of his being notified by the Controller of the making of the order.
Rules for Part VII of the Act.
55. (1) Upon publication of an application under section 28 the Controller shall cause to be entered in the register in accordance with section 84 (1)—
( a ) the name, address and nationality of the applicant or applicants;
( b ) the name and address of the person or persons stated by the applicant or applicants to be believed to be the inventor or inventors;
( c ) the title of the invention;
( d ) the date of filing and the number of the application for the patent;
( e ) in the case of an application claiming priority under section 26, the date of any previous filing, the state in or for which it was made and the file number;
( f ) the date of publication of the application;
( g ) the address for service of the applicant or applicants. (2) The Controller shall also cause to be entered in the register—
( a ) the date on which an application is refused, withdrawn, deemed to be withdrawn or has lapsed;
( b ) the date on which the notice of grant of a patent is published under section
34 (1);
( c ) the name, address and nationality of the person or persons to whom a patent is granted if different from the entries made in accordance with paragraph (1) (a);
( d ) the addresses for service if different from the entry made in accordance with paragraph (1) (g);
( e ) any title following an application under Rule 58 (1).
(3) The Controller may at any time enter in the register such other particulars as he may deem necessary.
(4) The register or entries or reproductions of entries in it may be made and kept in any of the forms indicated in section 84 (3).
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56. The register or entries or reproductions of entries in it shall for the purpose of
section 84 (2) be open to the inspection of the public, on payment of the prescribed fee, on every day on which the Office is open to the public during the time it is so open.
Change of name, etc. in register.
57. (1) A request for the alteration of a name or nationality or an address or an address for service in the register shall state—
( a ) the name and address of the person making the request;
( b ) the number of the patent or published application in question;
( c ) particulars of the alteration desired,
and shall be accompanied by the prescribed fee and by evidence as to the alteration if the latter concerns the name or nationality.
(2) If the Controller is satisfied that the request may be allowed, he shall cause the register to be altered accordingly.
Change of name etc. in register.
57. (1) A request for the alteration of a name or nationality or an address or an address for service in an application for the grant of a patent or in the register shall state—
(a) the name and address of the person making the request, (b) the number of the patent or application in question, and (c) particulars of the alteration desired,
and be accompanied by the prescribed fee.
(2) If the Controller is not satisfied that a request to alter a name or nationality may be allowed, he or she may require the submission of evidence in support of t he request.
(3) If the Controller is satisfied that a request to alter a name or nationality or address or address for service may be allowed, he or she shall cause the register or application to
be altered accordingly.
58. (1) An application under section 85 (1) or (2) for the registration of any title or interest or a claim under section 85 (8) that an application for a patent shall proceed in
the name of the claimant or in the names of the claimant and the applicant or each of the other applicants, shall be accompanied by a certified copy of the document upon
which the claim of the person whose title or interest is to be entered in the register is based or, as the case may be, by virtue of which the claim under section 85 (8) is based, unless the Controller otherwise directs, and by the prescribed fee or fees.
(2) When a person referred to in paragraph (1) does not claim to be entitled under any document or instrument which is capable in itself of furnishing proof of his title,
Patent (Amendment) Rules 2009
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interest or right he shall, unless the Controller otherwise directs, in conjunction with the application or claim, state a case setting forth the full particulars of the facts upon
which his application or claim is based. Such case shall be verified by a statutory declaration.
59. (1) On an application under section 85 (4), accompanied by the prescribed fee, the
Controller may, if satisfied as to the facts, cancel the entry of an interest in the register.
(2) The Controller may require such evidence as he thinks fit as to the circumstances in which the application is made, and may take such steps as he thinks fit for safeguarding the interest of the person who held the said interest.
60. Payment of any prescribed renewal fee in respect of the continuation in force of a patent application or a patent shall be entered in the register.
61. (1) An application to the Controller under section 86 (7) for the rectification of the register shall state—
( a ) the name and address of the applicant;
( b ) the number of the patent or the patent application in question;
( c ) the exact nature of the amendment of the register for which application is made;
and shall be accompanied by a statement setting out fully the nature of the applicant's interest and the facts upon which he relies, and by the prescribed fee.
(2) A copy of the application and statement shall be sent by the Controller to each person who appears to him, from the register or otherwise, to be interested in the application.
(3) At any time, within three months from the date of such notification by the Controller, any such interested person may give notice to the Controller of opposition to the application. Such notice shall set out fully the nature of the opponent's interest and the facts upon which he relies.
(4) Thereafter the Controller may give such directions as he thinks fit with regard to the subsequent procedure.
62. A request for a certificate of the Controller as referred to in section 87 (1) shall state—
( a ) the name and address of the person making the request;
( b ) particulars of the entry, matter or thing which the Controller is requested to certify;
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( c ) whether copies of any documents are to be annexed to the certificate and, if so, particulars of the documents;
and shall be accompanied by the prescribed fee.
63. A request for a copy or extract as referred to in section 87 (2) shall state—
( a ) the name and address of the person making the request;
( b ) particulars of the document of, or from which a copy, or extract, is required;
and shall be accompanied by the prescribed fee.
64. (1) A request under section 88 (1) for information relating to any patent or patent application may be made—
( a ) as to when the documents referred to in Rule 23 (2) or the specification of a patent have been published;
( b ) as to when a search report prepared under section 29 has been published; ( c ) as to the form of evidence submitted under section 30 (1);
( d ) as to when a patent application has been withdrawn, deemed to be withdrawn, refused by the Controller or has lapsed;
( e ) as to whether a patent is in force; (f) as to when a patent lapsed;
( g ) as to when an application for restoration of a patent has been filed;
( h ) as to when any application or request is made or action taken involving an entry in the register or advertisement in the Journal, if the matter which is the subject of such application, request or action is specified.
(2) The Controller may, on request, furnish information in relation to — ( a ) the registration of a design;
( b ) the registration of a trade mark or the acceptance of an application for the registration of a trade mark.
(3) Any such request shall relate to one item of information only and shall be accompanied by the prescribed fee.
65. (1) After the date of publication of a patent application the Controller shall, in accordance with section 88 (1), upon request and subject to payment of the prescribed
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fee, permit documents filed or kept in the Office in relation to the application, or to any patent granted in pursuance of it, to be inspected at the Office. This provision shall not apply to a document which the Controller, consequent upon a request from a person filing or sending the document, directs shall be treated as confidential, or to any document sent to the Office for inspection and subsequent return to the sender.
(2) The following bibliographic data are prescribed for the purposes of section 88 (3) (b)—
( a ) the number of the patent application;
( b ) the date of filing of the patent application and, where priority of a previous application is claimed, the date, state and file number of the previous application;
( c ) the name of the applicant;
( d ) the title of the invention as appearing in the request for grant.
66. (1) Subject to paragraph (6) a request under section 89 for a search to be carried out shall state—
( a ) the name and address of the person making the request;
( b ) those documents listed in paragraph (2) amongst which the search is required to be carried out;
( c ) whether the search is in respect of novelty only or novelty and inventive step;
( d ) if possible, the sub-class or group units of the International Patent
Classification to which the search is to be confined. The request shall be accompanied by the prescribed fee.
(2) Subject to paragraph (6), a search may be made among all or some of the following material—
( a ) patent applications published under this Act;
( b ) applications for patents laid open to public inspection under earlier Acts and complete specifications published under these Acts;
( c ) applications for patents and complete specifications published by the United Kingdom Patent Office, within thirty years before the date of the request under paragraph (1), in both instances as a result of applications filed with that office;
( d ) published applications for European patents in the English language or for which English language abstracts are available;
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( e ) published international applications under the Patent Co-operation Treaty in the English language or for which English language abstracts are available.
(3) A request under paragraph (1) shall be accompanied by a sufficiently full and detailed description (including drawings where appropriate) of the product, process or apparatus, which is the subject of the request to enable the search to be carried out.
(4) On receipt of a request under paragraph (1) the Controller shall inform the person making the request of the amount of the fee which will be required in respect of the conduct of the search. He shall also inform him if he considers the description accompanying the request to be inadequate for the purpose of conducting the search.
(5) If the fee referred to in paragraph (4) and, where appropriate, a revised description is not filed within two months of the notification under paragraph (4) the request shall be deemed to be withdrawn. The fee which accompanied the request shall not be refunded.
(6) A request under paragraph (1) may not be made prior to the date indicated for that purpose in the Journal. The Controller may from time to time indicate by Journal notice any limitations in force as to the material, from that listed in paragraph (2), amongst which a search may be carried out.
Rules for Part VIII of the Act.
67. (1) The Controller shall, before exercising adversely to any party to any
proceedings before him any discretionary power given to him by the Act, these Rules, or any other enactment, give that party notice that he may be heard.
(2) Where an inter partes hearing relating to a patent application or a patent takes place after the publication of the application under section 28, the hearing shall be in public, unless the Controller, after consultation with the parties, otherwise directs.
68. (1) Save as otherwise provided by these Rules, an application for a hearing by the
Controller shall be made within ten days from the date of notice by the Controller under
Rule 67 (1). The application shall be accompanied by the prescribed fee.
(2) Upon receiving an application for a hearing the Controller shall notify any other party to the proceedings and if such a party desires to attend and be heard he shall inform the Controller accordingly within ten days of the notification and pay the prescribed fee. The Controller shall give the party or parties concerned not less than ten days' notice of the time of the hearing unless the parties consent to shorter notice.
(3) A party who fails to attend a hearing appointed in accordance with this Rule may be treated as not desiring to be heard and the Controller may act accordingly.
(4) If in inter partes proceedings either party intends to refer at the hearing to any document not already mentioned in the proceedings, he shall give to the other party and to the Controller at least ten days' notice of his intention, together with details of each document to which he intends to refer.
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69. (1) The decision of the Controller in the exercise of any discretionary power shall
be notified to the party or parties concerned.
(2) A written statement of the grounds of the decision shall be furnished if application, accompanied by the prescribed fee, is made to the Controller by a party to the hearing within one month from the date of notification of the decision.
(3) Where, following inter partes proceedings, a written statement of grounds is furnished to one of the parties the Controller shall furnish every other party with a copy of the statement.
70. The states prescribed for the purposes of section 91 (2) are the other member states
of the European Economic Community.
71. A statutory declaration required by the Act or these Rules or used in any
proceedings thereunder or required by any other enactment in connection with any proceedings before the Controller shall be headed in the matter to which it relates, drawn up in the first person and divided into paragraphs consecutively numbered, and each paragraph shall so far as is possible be confined to one subject. Every statutory declaration shall state the description and true place of abode of the person making the same, and shall be prepared in accordance with the provisions of Rule 16 (2).
72. A statutory declaration required by the Act, or these Rules, or used in any proceedings thereunder, or required by any other enactment in connection with any
proceedings before the Controller, shall, if made and subscribed outside the State, be made and subscribed before a consular officer, a notary public or a judge or magistrate.
73. Any document purporting to have affixed, impressed or subscribed thereto or thereon the seal or signature of any person authorised by the last foregoing Rule to take
a declaration, in testimony that the declaration was made and subscribed before him, may be admitted by the Controller without proof of the genuineness of the seal, the
signature, the official character of the person or his authority to take the declaration.
74. The Controller may, at any stage of any proceedings before him, direct that such
documents, information or evidence as he may require shall be furnished within such period as he may fix.
75. Every application to the Court under the Act or in relation to any other business which is by law a function of the Controller or the Office shall be served on the
Controller.
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76. When an Order has been made by the Court in any matter under the Act or in relation to any other business which is by law a function of the Controller or the Office the person in whose favour such Order has been made or, if more than one, such person as the Controller may direct, shall forthwith leave at the Office an office copy of such Order. The Controller shall thereupon make any necessary alteration or rectification of the register or enter the purport of the Order in the register or make or permit such other alteration or take such proceedings as may be necessary to give effect to the Order.
Rules for Part IX of the Act.
Days and hours of business.
77. (1) The Office shall be open to the public for the transaction by the public of
business under the Act or under any other Act for the administration of which the Controller is responsible every Monday, Tuesday, Wednesday, Thursday and Friday between the hours at 9.45 a.m. and 4.15 p.m. and any other days and hours which may from time to time be notified under this Rule, but shall not be otherwise open.
(2) Notwithstanding the provisions of paragraph (1) of this Rule the Office shall not be open—
( a ) on any day which is a public holiday or any day which may from time to time be notified under this Rule; or
( b ) at any times which may from time to time be so notified on days which may from time to time be so notified.
(3) Notification under this Rule shall be posted in a conspicuous place at the Office.
Excluded days.
78. Whenever the last day fixed by the Act, or by these Rules, for doing any act or
thing at the Office falls on any of the days on which the Office is not open (which days shall be excluded days for the purposes of the Act and these Rules), it shall be lawful to do any such act or thing on the first day which is not an excluded day next following such excluded day, or days, if two or more of them occur consecutively.
Days and hours of business.
77. (1) The Controller may, by notice published in the Journal, give directions specifying the days and hours of business of the Office for the transaction by the public
of business under the Act or under any other Act for the administration of which the
Controller is responsible.
(2) Notifications of changes in days and hours of business and of days on which the
Office is not open shall be advertised in the Journal.
Excluded days.
78. (1) Whenever the last day fixed by the Act, or by these Rules, for doing any act or
thing at the Office falls on any of the days on which the Office is not open (which days shall be excluded days for the purposes of the Act and these Rules), it shall be lawful to do any such act or thing on the first day which is not an excluded day next following such excluded day, or days, if two or more of them occur consecutively.
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(2) Where the time for delivering any application, notice or document which the Controller has directed may be delivered in electronic form and by electronic means, expires on an excluded day, that time shall be extended to the next following day which is not an excluded day.
(3) Where an application, notice or document which the Controller has directed may be delivered in electronic form and by electronic means is received by the Office at any time before midnight on any day which is not an excluded day, that application, notice or document shall be treated as having been received by the Controller at that time and on that day.
Rules for Part X of the Act.
79. (1) Unless otherwise allowed by the Controller, the authorisation of a patent agent in accordance with section 105 (1) shall be made in Form No. 5. Where the request for
the grant of a patent is signed by the applicant or applicants, an authorisation other than that for which provision is made on Form No. 1 shall not be required from the applicant
or applicants.
(2) Subject to Rule 80—
( a ) all attendances upon the Controller may be made by a patent agent who has been authorised in accordance with paragraph (1) before the attendance, and
( b ) every notice, application or other document filed under the Act or these Rules may be signed by a patent agent in respect of whom an authorisation in accordance with paragraph (1) is filed not later than three months after the notice, application or document is filed.
(3) Any document or communication served upon or addressed to any patent agent authorised in accordance with paragraph (1) shall be deemed to be served upon or addressed to the person who appointed him.
Evidence of qualifications, etc.
79A. The following are prescribed for the purposes of paragraphs (a) (b) and (c),
respectively, of section 106(3A) –
(a) evidence indicating that the person referred to in section 106(3A) is established in the Member State concerned for the purpose of pursuing the activities concerned,
(b) evidence of the applicable qualifications ( within the meaning of section 106)
being –
(i) evidence such as a copy of a diploma or certificate, or
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(ii) other evidence of formal qualifications,
awarded by the competent authority of the Member State concerned which indicates that the person referred to in section 106(3A) is qualified to act as a patent agent in that state, and
(c) in a case falling –
(i) within paragraph (c)(i), a copy of a passport, national identity card or other proof of nationality, or
(ii) within paragraph (c)(ii), to the extent that proof of the matters referred to in the following clauses is not provided by the evidence referred to in paragraph (a) –
(I) a copy of a certificate of incorporation, an entry in a relevant register or other proof of the possession of the required legal personality,
(II) a copy of a certificate or an entry in a relevant register specifying the location of the person’s registered office, central administration or principal place of business or other proof of its location.
Controller to be informed of certain change of circumstances.
79B. If, subsequent to the provision by a person to the Controller of such evidence as is referred to in section 106(3A), there is any material change of circumstances affecting the
person’s continuing to be qualified to act as a patent agent in the Member State concerned, the person shall, forthwith , notify the Controller in writing of that change of circumstances.”.
80. (1) The Controller may, in accordance with section 109 (2), refuse to recognise as patent agent, or to receive further communications in respect of any business under the
Act or these Rules from—
( a ) any person whose name has been erased from the register of patent agents kept under the provisions of the Act and not since restored,
( b ) any person the registration of whose name in the register during a specified period has no effect,
( c ) any solicitor whose name has been struck off the roll of solicitors maintained under the Solicitors Acts, 1954 and 1960, and has not since been restored, or
( d ) any person found by the Minister to have been convicted of any offence or to have been guilty of any such misconduct as, in the case of an individual
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registered in the register of patent agents, would render him liable to have his name erased from it. erased from it,
( e ) any person who no longer satisfies the requirements of section
106(3),or
( f ) a person referred to in section 106(3A) who does not comply with Rule
79A or 79B.”.
(2) The Controller may, in accordance with section 109 (3), refuse to recognise as patent agent or to receive further communications in respect of any business under the Act or these Rules from any company or firm if any person whom the Controller could refuse to recognise under paragraph (1) continues to be a director, manager or partner.
81. The states prescribed for the purposes of section 107 (1) (a) and (b) are the other member states of the European Economic Community. [Revoked]
Rules for Part XI of the Act.
82. An application for the correction of an error or mistake under section 110 shall state—
( a ) the name and address of the applicant and his interest in the patent or patent application in question;
( b ) the number and date of the patent or patent application;
( c ) exact details of the correction desired, with particulars sufficient to identify the document to be corrected,
and shall be accompanied by the prescribed fee.
Opposition to a request to correct an error in a withdrawal of an application.
82A. (1) At any time within two months of the publication of a request under section
110(2A) any person may give notice of opposition to the request.
(2) Such notice shall be furnished in duplicate and shall state— (a) the name and address of the opponent,
(b) the number of the application concerned,
(c) the ground or grounds upon which restoration of the application is opposed, and shall be accompanied by the prescribed fee and by a statement in duplicate setting
out fully the facts upon which the opponent relies.
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(3) Copies of the notice and the statement of the opponent shall be sent by the
Controller to the person making the request.
(4) Within three months of the receipt of such copies, if the person making the request wishes to proceed with same, he, she, they or it shall file a counter-statement in duplicate setting out fully the grounds upon which the opposition is resisted, and the Controller shall send a copy of the counter-statement to the opponent.
(5) The Controller may give such directions as he or she thinks fit with regard to the subsequent procedure.
Rules for Part XII of the Act.
Translation of specification of European patent.
83. (1) The period prescribed for the purpose of section 119 (6) shall be six months
from the date of publication of the specification or, in the case of the amended specification referred to in section 119 (6) (b), six months from the carrying out of the amendment.
(2) The specification or amended specification as the case may be shall not be regarded as having been filed unless the prescribed fee is also paid within the period specified in paragraph (1).
Translation of specification of European patent.
83. (1) The period prescribed for the purposes of—
(a) section 119(6)(a), in respect of a specification, or
(b) section 119(6)(b), in respect of an amended or limited specification
shall be 6 months from the date of publication of the specification, or the amended or limited specification.
(2) The specification, or the amended or limited specification, as the case may be, shall not be regarded as having been filed unless the prescribed fee is also paid wit hin the period specified in paragraph (1).
Restoration where translation not filed under section 119(6).
83A. (1) The time limit for making a request under section 119A to restore the effect of section 119(1) shall be the date falling—
(a) two months from the date of the removal of the cause of non-compliance, or
(b) twelve months from the expiration of the period prescribed for the purpose of section 119(6),
whichever is the earliest.
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(2) The request to restore the effect of section 119(1) shall contain:
(a) the name and address of the applicant for restoration and the number of the patent in question,
(b) the circumstances which led to the failure to comply with the time limit under section 119(6),
(c) the translation as required under section 119(6) and the prescribed fee,
and shall be accompanied by the prescribed application fee and by evidence verifying any statement made in relation to the circumstances mentioned in subparagraph (b).
(3) Where, upon consideration of the evidence provided under paragraph (2), the Controller is not satisfied that the case for a restoration order has been made, he or she shall notify the applicant accordingly, and unless within one month the applicant requests to be heard in the matter the Controller shall refuse the application.
Opposition to restoration where translation not filed under section 119(6).
83B. (1) At any time within 2 months of the advertisement of the application for restoration under section 119A(5) any person may give notice of opposition thereto.
(2) Such notice shall be furnished in duplicate and shall state—
(a) the name and address of the opponent,
(b) the number of the patent concerned, and
(c) the ground or grounds upon which the application for restoration is opposed,
and shall be accompanied by the prescribed fee and by a statement in duplicate setting out fully the facts upon which the opponent relies.
(3) Upon notice of opposition being given the Controller shall send to the opponent a copy of the said application and accompanying evidence.
(4) A copy of the notice and the statement of the opponent shall be sent by the
Controller to the applicant for restoration.
(5) Within three months of the receipt of such copies, the said applicant shall, if he, she, they or it wishes to proceed with the application, file a counter-statement in duplicate setting out fully the grounds upon which the opposition is resisted, and the Controller shall send a copy of the counter-statement to the opponent.
(6) The Controller may give such direct ions as he or she thinks fit with regard to the subsequent procedure.
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84. On filing the translation of the claims of a European patent application designating
the State at the Office under section 120 (6) the prescribed fee shall be paid.
85. Within one month of the filing at the Office of the corrected translation referred to
in section 121 (3) the prescribed fee shall be paid if it is desired that the said translation be published by the Office.
86. (1) A request referred to in section 122 (2) (b) (i) shall indicate the states to which a copy of the European application is to be sent in accordance with Article 136 (2) of
the European Patent Convention and the period within which such a request may be made shall be three months from the date on which the applicant is notified by the
European Patent Office that his application for a European patent has been deemed to be withdrawn. The request shall be accompanied by the notification issued by the
European Patent Office and the prescribed fee. In such a case, the applicant shall in accordance with section 122 (2) (a) pay the filing fee and, where necessary, file a
translation in duplicate of the application within a period of two months from the date on which the Controller receives the request. The applicant shall also, within this
period, comply with the requirements of section 17 (2).
(2) Where section 122 (2) (b) (ii) applies, the period within which a request may be transmitted to the Controller shall be 20 months calculated from the date of priority or, where there is no claim to priority, the date of filing of an application for the European patent. Upon receipt of the request, the Controller shall notify the applicant thereof and the filing fee shall be paid and, where necessary, a translation in duplicate of the application shall be filed by the applicant within the period of two months calculated from the date of the notification. The applicant shall also, within this period, comply with the requirements of section 17 (2).
87. (1) Where the Office is the competent receiving office under the Treaty, an international application shall be filed at it in English in triplicate, accompanied by the
prescribed transmittal fee.
(2) If less than three copies of the international application are so filed, the applicant shall pay on demand, to the Office, the prescribed charge for preparation by it of the number of copies of the application required to bring the total to three.
(3) Payment of the basic fee and the designation fees referred to in rule 15.1 of the Regulations under the Treaty shall be made to the Office in the currency of the State and in the amounts fixed in accordance with the provisions of rule 15.2 (b) of the said Regulations. The fees shall be paid within the time specified in rule 15.4 of the Regulations.
(4) Payment of the search fee referred to in rule 16.1 of the said Regulations shall be made to the Office in the currency of the State within the time prescribed in that rule and in the amount fixed in accordance with the provisions of rule 16.1 (b) of the said Regulations.
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(5) In the event of failure to comply with the provisions of paragraphs (3) and (4), the provisions of rule 16. bis of the Regulations shall apply.
(5) In the event of failure to comply with the provisions of paragraphs (3) and (4), a late payment fee, calculated in accordance with the provisions of Rule 16. bis of the Regulations under the Patent Cooperation Treaty, shall be made to the Office in the currency of the State. The fee shall be calculated as follows:
(i) 50% of the amount of unpaid fees which is specified in the invitation, or, (ii) if the amount calculated under item (i) is less than the transmittal fee, an
amount equal to the transmittal fee.
The amount of the late payment fee shall not, however, exceed the amount of the international filing fee referred to in item 1 of the Schedule of Fees of the Regulations under the Patent Cooperation Treaty.
(6) A request under rule 20.9 of the said Regulations for a certified copy of an international application as filed with the Office as receiving office and of any corrections thereto shall be accompanied by the prescribed fee.
88. The Controller may, in accordance with section 131, authorise the communication to the European Patent Office or the competent authority of any state which is party to
the European Patent Convention of such information in the files of the Office as may be disclosed in accordance with section 88 and Rules 64 and 65, or as is included in
documents published under section 28 and Rule 23, or as is included in the register.
General.
89. (1) The fees to be paid in connection with any provision of the Act and these Rules
shall be those specified in Schedule I or elsewhere in these Rules. Save as provided in paragraph (2) or (3) of this Rule, payment of a fee or fees by any person shall be made by cheque payable to the Minister for Industry and Commerce and crossed "& Co.", guaranteed to the satisfaction of the Controller, drawn on any bank carrying on business in the State and presented at the Office with the application or the matter to which it relates.
(2) Payment of a fee or fees by a person who, at the date of the payment, is outside the State shall be made by banker's draft, or Post Office Money Order payable to the Minister for Industry and Commerce and crossed "& Co." and sent by post to the
Office.
(3) Any fee or fees paid at the Office not exceeding £50 may be paid in cash.
(4) A request for the remission of the whole or part of any fee properly paid shall be made in writing. No appeal shall lie from any decision of the Controller in respect of such a request.
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(5) Fees shall be paid in the currency of the State.
90. The forms mentioned in these Rules are those set out in Schedule II.
91. (1) A document purporting to be signed for or on behalf of a partnership shall contain the names of all the partners in full and shall be signed by all the partners, or by
any partner authorised to sign on behalf of the partnership, or by any other person who satisfies the Controller that he is authorised to sign the document.
(2) A document purporting to be signed for or on behalf of a body corporate shall be signed by a director (if any) or the secretary (if any) of the body corporate or by any other person who satisfies the Controller that he is authorised to sign the document.
(3) A document purporting to be signed for or on behalf of an unincorporated body (not being a partnership) may be signed by any person who satisfies the Controller that he is duly authorised to sign it.
92. (1) Every person concerned in any proceeding under the Act or these Rules and every proprietor of a patent (including a European patent designating the State) shall give to the Controller an address for service in the State in the European Community in a state that is a contracting party to the EEA Agreement within the meaning of the European Communities (Amendment) Act 1992 (No. 25 of 1993) and that address may for all purposes under the Act and these Rules be treated as the actual address of such person. A letter addressed to such a person or proprietor at his address for service shall be deemed to be properly addressed.
(2) For the purposes of this Rule, in a case where the person or proprietor concerned desires that the address for service shall consist of the address of a patent agent who is registered in the register of patent agents, the Controller may accept an address for service comprising the name of the patent agent so registered followed by a statement
in the following terms:— "at his address as recorded for the time being in the register of patent agents".
93. (1) Every person concerned in any proceedings under the Act or these Rules who is not resident, or has not his principal place of business in the State in the European Community in a state that is a contracting party to the EEA Agreement within the meaning of the European Communities (Amendment) Act 1992 (No. 25 of 1993) shall be represented by a duly authorised patent agent and shall act through him in all proceedings before the Controller or the Office.
(2) Every applicant for a patent shall, for the purpose of submitting any statement or amendment under the provisions of section 29 (4) or section 30 (4) or (5), be represented by a duly authorized patent agent. Repealed 2009
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94. (1) Where a document, other than a patent application or the specification of a patent granted under this Act, is referred to in any reference, notice, statement, counter-
statement or evidence required by the Act or these Rules to be filed at the Office or sent to the Controller, copies of the document shall, subject to paragraph (2), be burnished
furnished to the Office within the same period as the reference, notice, statement, counter-statement or evidence in which they are first referred to may be filed and in the
following number—
( a ) where the document in which they are so referred to had to be filed or sent in duplicate or the original document had to be accompanied by a copy thereof, in duplicate; and
( b ) in all other cases, one copy provided that where a copy of any evidence is required by the Act or these Rules to be sent direct to any person, a copy of any document referred to in that evidence shall also be sent direct to that person.
(2) The Controller may require the filing of a copy of any document referred to in any of the forms of evidence mentioned in Rule 27 or brought to notice in any report referred to in Rule 25. The copy shall be filed within two months of the notification that it is required.
Furnishing of documents.
94A. (1) Any application, notice or other document authorised or required under the
Act or these Rules to be delivered to the Controller or any other person may be sent by
post or by other means subject to such terms or conditions as may be specified by the
Controller and published in the Journal.
(2) For the purposes of paragraph (1) the Controller may issue directions specifying— (a) the forms and documents that are to be filed or submitted using electronic
means,
(b) the manner in which any such form or document is to be filed or submitted. (3) Where the Controller has specified that an application, notice or document may be
delivered in electronic form, any requirement in these Rules for duplicate copies to be
filed shall not apply.
(4) Where the Controller is required or authorised under the Act or Rules to — (a) send or give any notice or other document,
(b) give any directions, or
(c) furnish any information,
he or she may, notwithstanding any provision in these Rules to the contrary, do so by means other than by post.
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95. (1) Where a document in a foreign language is filed in connection with any proceedings under the Act or these Rules, it shall, unless otherwise provided, be
accompanied by a translation thereof verified to the satisfaction of the Controller. Where the document is or forms part of an application for a patent, the Office shall not,
in the absence of such a translation, take any further action in relation to that document, unless the Controller so directs.
(1) Where a document in a foreign language is filed in connection with any proceedings under the Act or these Rules, it shall, unless otherwise provided, be accompanied by a translation thereof verified to the satisfaction of the Controller. Subject to the provisions of Rule 10A, where the document is or forms part of an application for a patent, the Office shall not, in the absence of such a translation, take any further action in relation to that document, unless the Controller so directs.
(2) Where more than one copy of that document is required to be so filed, a corresponding number of copies of the translation shall accompany it.
(3) Where the evidence furnished under section 30 (1) or any document filed in accordance with Rule 94 (2) is in a foreign language, a translation of the evidence or of that document verified to the satisfaction of the Controller shall be filed within two months of the request to file the translation.
(4) Where proceedings are instituted before the Controller in relation to a European patent designating the State the specification of which was published in French or German, the party who institutes those proceedings shall furnish to the Office a translation of the specification of the patent, verified to the satisfaction of the Controller as corresponding to the original text thereof. , unless such a translation has already
been filed under section 119 (6).*
(5) If, in the course of such proceedings, leave is given for the amendment of the specification of the European patent designating the State, a translation of the amendment into the language in which the specification of the patent was published, verified to the satisfaction of the Controller, shall be furnished to the Controller.
(6) The Controller may refuse to accept any translation which is in his opinion inaccurate and thereupon another translation verified as aforesaid shall be furnished, together with the appropriate number of copies thereof.
96. Where, under these Rules, any person is required to do any act or to sign any
document, or to make any declaration on behalf of himself or of any body corporate, or any document or evidence (other than evidence under Rule 27) is required to be produced to or left with the Controller or at the Office, and it is shown to the
satisfaction of the Controller that from any reasonable cause such person is unable to do
such act or thing or to sign such document or to make such declaration or that such document or evidence cannot be produced or left as aforesaid, it shall be lawful for the
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Controller, upon the production of such evidence and subject to such terms as he thinks fit, to dispense with any such act or thing, signature, declaration, document or evidence.
97. Any document for the amending of which no special provision is made by the Act may be amended, and any irregularity in procedure which in the opinion of the
Controller may be obviated without detriment to the interests of any person may be corrected, if and on such terms and in such manner as the Controller thinks fit; provided
that, without prejudice to the Controller's power to extend any times or periods under
Rule 98 and except where such irregularity is attributable wholly or in part to an error,
default or omission on the part of the Office, the Controller shall not direct that any period of time specified in the Act or Rules shall be altered.
98. (1) Subject to paragraph (5) the times or periods prescribed by these Rules for doing any act or taking any proceeding thereunder, other than times or periods
prescribed in the Rules specified in paragraph (3), may upon request made to him, accompanied by the prescribed fee, be extended by the Controller if he thinks fit, upon
such notice to the parties and upon such terms as he may direct, and such extension may be granted although the time or period for doing such act or taking such
proceeding has already expired.
(2) The Controller shall not grant an extension under paragraph (1) if the request therefor is made more than one month after the expiry of the prescribed time or period for doing the act or taking the proceeding in question.
(3) The Rules referred to in paragraph (1) are Rules 6, 14 (3), 14 (18), 18, 19, 21, 22,
24 (1), 24 (4), 28 (1), 29, 33, 34, 39 (2), 40 (3), 48 (2), 49 (1), 52 (1) and 86.
(3) The Rules referred to in paragraph (1) are Rules 6, 8A, 8B, 10A, 10B(4) and (5),
14(3), 14(9)(b), 14(15)(b)(ii), 14(17)(b) and (d), 18, 19, 19A, 21, 22(2), (3), (6) and (7),
24(1), (3A), (4) and (6), 28(1), 29, 33(4), 33A(1), (2) and (3), 33B, 34, 39(2), 40(3),
48(2), 49(1), 52(1), 82A and 86.
(4) Where the period within which any party to a dispute may file evidence under these Rules is to begin after the expiry of any period in which any other party may file evidence under these Rules and that other party notifies the Controller that he does not wish to file any or any further evidence, the Controller may direct that the period within which the first-mentioned party may file evidence shall begin on such date as may be specified in the direction and shall notify all the parties to the dispute of that date.
(5) Where any period of time specified in the Act or these Rules for the giving, making or filing of any notice, application or other document expires on a day certified by the Controller as being one on which there is a general interruption or subsequent dislocation in the postal service of the State, the period shall be extended to the first day following the end of the period of interruption or dislocation.
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(5) (a) Where any period of time specified or prescribed in the Act or these Rules for the giving, making or filing of any notice, application or other document expires on a day certified by the Controller as being one on which there is an interruption, failure or delay in a communication service, the period shall be extended to the first day following the end of the said period of interruption, failure or delay.
(b) In this rule “communication service” means a service by which documents may be sent and delivered, and includes post and electronic communications.
(6) Where an application for a patent is filed upon the day immediately following a day which is certified under paragraph (5) or which is an excluded day for the purposes of section 104, the period specified in section 12 shall be computed from the day following the next preceding day which is neither so certified nor so excluded.
Extensions of time limits specified by the Controller.
98A. (1) A request for an extension of time under section 118A(1) shall be
accompanied by the prescribed fee and be made before the end of the period prescribed for section 118A(3).
(2) The period prescribed for the purpose of section 118A(3) is two months from the date of expiry of the relevant time limit mentioned in section 118A(1).
Reinstatement of application.
99. (1) If an application for a patent is refused by the Controller arising from an omission by the applicant to reply to a communication within a time limit specified by
the Controller for so doing, the applicant may apply to the Controller for reinstatement of the application.
(2) An application under paragraph (1) shall be invalid—
( a ) if it is not made within a period of two months fro m the date on which the decision to refuse was notified; and
( b ) if it is not accompanied by the prescribed fee; and
( c ) if the omitted act which led to the refusal is not carried out within the two months specified in (a).
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SCHEDULE I FEES PAYABLE
|
Item No. |
Item |
Amount £ | |
|
1. |
On filing an application Under Part II — section 18 (3). Under Part III — section 63 (8). |
117.00 55.00 | |
|
2. |
On request for Controller's certificate authorising the release of a sample of deposited culture — Rule 14 (6) and (16). |
10.00 | |
|
3. |
Additional fee under Rule 21 (2) For the first month. For the second month. |
100.00 150.00 | |
|
4. |
On application for extension of time of one month for filing copy of previous application required for claiming priority — Rule 22 (2). |
10.00 | |
|
5. |
Fee in connection with previous application filed at the Office — Rule 22 (4). |
10. 00 | |
|
6. |
On request for a search Under section 29 (1). Under section 29 (2). |
285.00 285.00 | |
|
7. |
On submitting evidence under section 30 — Rule 27 (2). |
68.00 | |
|
8. |
On request for an extension of time under Rule 27 (4) For each month of extension. |
10.00 | |
|
9. |
Fee for the grant of a patent Where the patent application was filed under Part II. Where the patent application was filed under Part III. |
51.00 25.00 | |
|
10. |
On application for extension of time for payment of the fee for grant of a patent — Rule 29 For each month of extension. |
15.00 | |
|
11. |
On application to amend the request for grant — Rule 30. |
10.00 | |
|
12. |
On application for leave to amend the description, claims or drawings — Rule 31 (3). |
25.00 | |
|
13. |
Application renewal fee — Rule 33 |
25.00 | |
|
14. |
For renewal of a patent — Rule 34 |
50.00 | |
|
Where the patent application was filed under Part II | |||
|
In respect of the 3rd year |
54.00 | ||
|
In respect of the 4th year |
72.00 | ||
|
In respect of the 5th year |
90.00 | ||
|
In respect of the 6th year |
106.00 | ||
|
In respect of the 7th year |
122.00 | ||
|
In respect of the 8th year |
140.00 | ||
|
In respect of the 9th year |
154.00 | ||
|
In respect of the 10th year |
174.00 | ||
|
In respect of the 11th year |
191.00 | ||
|
In respect of the 12th year |
209.00 | ||
|
In respect of the 13th year |
225.00 | ||
|
In respect of the 14th year |
245.00 | ||
|
In respect of the 15th year |
264.00 | ||
|
In respect of the 16th year |
281.00 |
Unofficial consolidated version – internal document only
In respect of the 17th year 301.00
In respect of the 18th year 322.00
In respect of the 19th year 345.00
In respect of the 20th year 369.00
Where the patent application was filed under Part III In respect of the 3rd to the 10th years, one half of the renewal fees specified above.
15. On request for extension of period for payment of renewal fees
— sections 35 (2) and 36 (3)
For the first month. 9.00
For the second month. 9.00
For the third month. 9.00
For the fourth month. 15.00
For the fifth month. 15.00
For the sixth month. 15.00
16. On application for the restoration of a lapsed patent or patent
application — Rule 35. 60.00
17. On opposition to the restoration of a patent or patent
application — Rule 36. 10.00
18. Additional fee on restoration of a patent or patent application
— Rule 37. 20.00
19. On application to amend the specification of a patent — Rule
39 (1). 50.00
20. On notice of opposition to the amendment of the specification
of a patent — Rule 39 (3). 20.00
21. On notice of opposition to the surrender of a patent — Rule 40
(3). 40.00
22. On application to the Controller for the revocation of a patent
— Rule 41 (1). 100.00
23. On application for entry in register that licences are to be
available as of right — Rule 46. 20.00
24. On application for settlement of terms of a licence of right —
Rule 47 (1). 200.00
25. On application by proprietor under section 69 (1) for
cancellation of entry in the register — Rule 48 (1). 40.00
26. On application under section 69 (2) for cancellation of entry in
the register — Rule 48 (2). 40.00
27. On notice of opposition to cancellation of entry in the register
— Rule 49 (2). 20.00
28. On application for compulsory licence or entry in the register
under section 70 (1) or section 72 (1) — Rule 50. 250.00
29. On notice of opposition under section 73 (3) — Rule 52 (2). 40.00
30. For inspection of register — Rule 56
For each quarter of an hour or part thereof. 1.50
31. On request for alteration of name, nationality, address or address for service in the register — Rule 57
For each application or patent. 8.00
32. On application or claim under section 85 — Rule 58 (1).
For each additional patent or application where the devolution of title is the same as in the first patent or application.
33. On application for cancellation of entry of interest in register
40.00
5.00
— Rule 59 (1). 5.00
Unofficial consolidated version – internal document only
|
34. |
On application to the Controller under section 86 (7) for rectification of the register —Rule 61 (1). |
40.00 |
|
35. |
On request for certificate of Controller under Rule 62. |
10.00 |
|
36. |
For each document annexed to a certificate requested under Rule 62. |
10.00 |
|
37. |
On request for copy or extract — Rule 63. |
3.00 |
|
For each page |
0.50 | |
|
38. |
On request for information — Rule 64 (3) | |
|
For each item. |
5.00 | |
|
39. |
For inspection of documents — Rule 65 (1) | |
|
For each quarter of an hour or part thereof. |
1.50 | |
|
40. |
On request for a search — Rule 66 (1). |
10.00 |
|
41. |
Fee for conducting a search — Rule 66 (4) | |
|
For each estimated hour of search time. |
75.00 | |
|
42. |
On application for a hearing — Rule 68(1). |
20.00 |
|
43. |
On notice that hearing will be attended — Rule 68 (2). |
20.00 |
|
44. |
On request to the Controller to state grounds of his decision — Rule 69 (2). |
75.00 |
|
45. |
On application for the correction of an error or mistake — Rule 82. |
5.00 |
|
46. |
On filling translation of specification of European patent designating the State or of such a specification as amended — section 119 (6). |
30.00 |
|
47. |
On filing translation of claims of an application for a European patent designating the State — section 120 (6). |
30.00 |
|
48. |
For publication by the Office of a corrected translation filed under section 121 (3) — Rule 85. |
30.00 |
|
49. |
On request for conversion of European patent application — Rule 86(1). |
25.00 |
|
50. |
Transmittal fee on filing an international application at the Office — Rule 87 (1). |
60.00 |
|
51. |
For preparation of copies of international applications — Rule 87 (2) For each page comprising the application. |
0.50 |
|
52. |
On request for a certified copy of an international application — Rule 87 (6). |
20.00 |
|
53. |
On application for extension of time under Rule 98 For each month of extension. |
25.00 |
|
54. |
On application for reinstatement of an application — Rule 99 (2). |
75.00 |
|
55. |
On application for insertion of notice in the Journal for the purposes of section 13 (7) of the Copyright Act, 1963 . |
5.00 |
|
56. |
For reproductions of patent applications filed at the Office and open to inspection For each page required. |
0.25 |
|
57. |
For reproductions of any other published patent documents made available at the Office and which the Controller indicates, by Journal notice from time to time, are available for reproduction For each page. |
0.25 |
|
58. |
For reproductions of entries in the register For each page. |
0.25 |
Unofficial consolidated version – internal document only
59. For inspection of any classified indices of published patent applications or patents or any patent documents made available at the Office
For each quarter of an hour or part thereof. 1.50
|
Patents, Trade Marks and Design (Fees) Rules 2001 |
Patent (Amendment) Rules 2009 |
|
Patents, Trade Marks and Designs (Fees) (Amendment) Rules 2008 |
Patents, Trade Marks and Design (Fees) Rules 2012 |
|
Patent (Amendment) Rules 2012 |
Patents, Trade Marks and Design (Fees) (Amendment) (No.2) Rules 2012 |
|
Reference Number |
Item |
Amount € | ||
|
(1) |
(2) |
(3) | ||
|
1. |
On filing an application | |||
|
Under Part II - section 18(3) |
125.00 | |||
|
Under Part III - section 63(8) |
60.00 | |||
|
1A. |
Additional fee on late filing of a patent application (Rule 8B) under Part II — section 18(3). under Part III — section 63(8). |
62.50 30.00 | ||
|
2. |
On request for the Controller's certificate authorising the release of a sample of deposited culture - paragraphs (6) and (16) of Rule 14 |
12.00 | ||
|
3. |
Additional fee under Rule 21(2) | |||
|
For the first month. |
125.00 | |||
|
For the second month. |
190.00 | |||
|
4. |
On application for extension of time of one month for filing copy of previous application required for claiming priority - Rule 22(2). |
12.00 | ||
|
4. |
On application for extension of time of one month for filing copy of previous application required for claiming priority — Rule 22(5). |
12.00 | ||
|
5. |
Fee in connection with previous application filed at the Office - Rule 22(4). |
12.00 | ||
|
5. |
Fee in connection with previous application filed at |
12.00 |
Unofficial consolidated version – internal document only
|
the Office — Rule 22(8). | ||
|
6. |
On request for a search | |
|
Under section 29(1). |
361.00 | |
|
6. |
Under section 29(2) On request for a search under section 29 |
361.00 200.00 |
|
7. |
On submitting evidence under section 30 - Rule 27(2). |
86.00 |
|
8. |
On request for an extension of time under Rule 27(4) | |
|
For each month of extension. |
12.00 | |
|
9. |
Fee for the grant of a patent | |
|
Where the patent application was filed under Part II. |
64.00 | |
|
Where the patent application was filed under Part III. |
30.00 | |
|
10. |
On application for extension of time for payment of the fee for grant of a patent - Rule 29 | |
|
For each month of extension. |
19.00 | |
|
11. |
On application to amend the request for grant - Rule 30. |
12.00 |
|
12. |
On application for leave to amend the description, claims or drawings - Rule 31(3). |
30.00 |
|
13. |
For renewal of an application for a patent (Rule 33) or for renewal of a patent (Rule 34) | |
|
Where the patent application was filed under Part II | ||
|
In respect of the 3rd year. |
60.00 | |
|
In respect of the 4th year. |
90.00 | |
|
In respect of the 5th year. |
114.00 | |
|
In respect of the 6th year. |
134.00 | |
|
In respect of the 7th year. |
150.00 | |
|
In respect of the 8th year. |
176.00 | |
|
In respect of the 9th year. |
194.00 | |
|
In respect of the 10th year. |
220.00 | |
|
In respect of the 11th year. |
242.00 | |
|
In respect of the 12th year. |
265.00 | |
|
In respect of the 13th year. |
285.00 | |
|
In respect of the 14th year. |
311.00 | |
|
In respect of the 15th year. |
335.00 | |
|
In respect of the 16th year. |
356.00 | |
|
In respect of the 17th year. |
382.00 | |
|
In respect of the 18th year. |
408.00 | |
|
In respect of the 19th year. |
438.00 | |
|
In respect of 20th year. |
468.00 | |
|
Where the patent application was filed under Part III. |
In respect of |
Unofficial consolidated version – internal document only
|
the 3rd to the 10th years, one half of the renewal fees specified above. | ||
|
13A. |
On request for reinstatement of a patent application - Rule 33A. |
125.00 |
|
13B. |
On opposition to the reinstatement of a patent application - Rule 33B. |
13.00 |
|
14. |
On request for extension of period for payment of renewal fees - sections 35(2) and 36(3) | |
|
For the 1st month. |
11.00 | |
|
For the 2nd month. |
11.00 | |
|
For the 3rd month. |
11.00 | |
|
For the 4th month. |
19.00 | |
|
For the 5th month. |
19.00 | |
|
For the 6th month. |
19.00 | |
|
15. |
On application for the restoration of a lapsed patent or patent application - Rule 35. |
125.00 |
|
16. |
On opposition to the restoration of a patent or patent application - Rule 36. |
12.00 |
|
17. |
Additional fee on restoration of a patent or patent application - Rule 37. |
Nil |
|
18. |
On application to amend the specification of a patent - Rule 39(1). |
60.00 |
|
19. |
On notice of opposition to the amendment of the specification of a patent - Rule 39(3) |
25.00 |
|
20. |
On notice of opposition to the surrender of a patent - Rule 40(3). |
50.00 |
|
21. |
On application to the Controller for the revocation of a patent - Rule 41(1). |
125.00 |
|
22. |
On application for the entry in the Register of Patents that licences are available as of right - Rule 46. |
25.00 |
|
23. |
On application for settlement of terms of a licence of right - Rule 47(1). |
250.00 |
|
24. |
On application by the proprietor of a patent under section 69(1) for cancellation of entry in the Register of Patents - Rule 48(1) |
50.00 |
|
25. |
On application under section 69(2) for cancellation of entry in the Register of Patents - Rule 48(2). |
50.00 |
|
26. |
On notice of opposition to cancellation of an entry in the Register of Patents - Rule 49(2). |
25.00 |
|
27. |
On application for compulsory licence or entry in the Register of Patents under section 70(1) or section 72(1) - Rule 50. |
310.00 |
Unofficial consolidated version – internal document only
|
28. |
On notice of opposition under section 73(3) - Rule 52(2). |
50.00 |
|
29. |
For inspection of the Register of Patents - Rule 56 | |
|
For each quarter of an hour or part thereof. |
Nil | |
|
30. |
On request for alteration of name, nationality, address or address for service in the Register of Patents - Rule 57 | |
|
For each application or patent. |
Nil | |
|
31. |
On application or claim under section 85 - Rule 58(1). |
50.00 |
|
For each additional patent or application where the devolution of title is the same as in the first patent or application. |
6.00 | |
|
32. |
On application for cancellation of entry of interest in the Register of Patents - Rule 59(1). |
6.00 |
|
33. |
On application to the Controller under section 86(7) for rectification of the Register of Patents - Rule 61(1). |
50.00 |
|
34. |
On request for certificate of the Controller under rule 62. |
12.00 |
|
35. |
For each document annexed to a certificate requested under Rule 62. |
Nil |
|
36. |
On request for certified copy or extract - Rule 63. |
3.00 |
|
For each page of the document comprising the certified copy or extract. |
0.60 | |
|
37. |
On request for information - Rule 64(3) | |
|
For each item. |
6.00 | |
|
38. |
For inspection of documents - Rule 65(1) | |
|
For each quarter hour or part thereof. |
1.00 | |
|
39. |
On request for a search - Rule 66(1). |
12.00 |
|
40. |
Fee for conducting a search - Rule 66(4) | |
|
For each estimated hour of search time |
95.00 | |
|
41. |
On application for a hearing - Rule 68(1). |
60.00 |
|
42. |
On notice that hearing will be attended - Rule 68(2). |
Nil |
|
43. |
On request to the Controller to state grounds of his decision - Rule 69(2). |
95.00 |
|
44. |
On application for the correction of an error or mistake - Rule 82. |
6.00 |
|
44A. |
On opposition to an application for the correction of an error or mistake - Rule 82A. |
12.00 |
|
45. |
On filing translation of specification of European patent designating the State or of such a specification as amended as amended or limited - section 119(6). |
35.00 |
|
45A. |
On application for restoration under section 119A - Rule 83A. |
125.00 |
Unofficial consolidated version – internal document only
|
45B. |
On opposition to application for restoration (Rule 83B). |
12.00 |
|
46. |
On filing translation of claims of an application for a European patent designating the State - section 120(6). |
35.00 |
|
47. |
For publication by the Office of a corrected translation filed under section 121(3) - Rule 85. |
35.00 |
|
48. |
On request for conversion of European patent application - Rule 86(1). |
30.00 |
|
49. |
Transmittal fee on filing an international application for a patent at the Office - Rule 87(1). |
76.00 |
|
50. |
For preparation of copies of international applications for a patent - Rule 87(2) | |
|
For each page comprising the application. |
0.60 | |
|
51. |
On request for a certified copy of an international application for a patent - Rule 87(6). |
25.00 |
|
52. |
On application for extension of time under Rule 98(1) |
Nil |
|
For each month of extension |
30.00 | |
|
52A. |
On application for an extension of time under Section 118A(1), made within the period prescribed for the purpose of section 118A(3); For each month of extension actually granted under either or both subsections (3) and (5) of section 118A. |
Nil 30.00 |
|
53. |
On application for reinstatement of an application - Rule 99(2). |
95.00 |
|
54. |
On application for insertion of notice in the Journal for the purposes of section 13(7) of the Copyright Act, 1963 . |
Nil |
|
55. |
For reproductions of patent applications filed at the Office and open to inspection | |
|
For each page required. |
Nil | |
|
56. |
For reproductions of any other published patent documents made available at the Office and which the Controller indicates, by notice in the Journal from time to time, are available for reproduction | |
|
For each page. |
Nil | |
|
57. |
For reproductions of entries in the Register of Patents | |
|
For each page. |
Nil | |
|
58. |
For inspection of any classified indices of published patent applications or patents or any patent documents made available at the Office | |
|
For each quarter of an hour or part thereof. |
Nil | |
|
59. |
For photocopies or reproductions of documents open to public inspection (per page). |
0.30 |
Unofficial consolidated version- internal document only
60. Initial connection fee in respect of on-line dial-in access for inspection of any classified indices of published patents or any patent documents open to
the public. 2,500
Unofficial consolidated version – internal document only
Rule 8
Rule 6
Rule 32
Rule 34
Rule 79
Rule 14 (6)
Form No. 7 Notification to Controller that a sample of a micro-organism biological material may be made available only to an expert
Rule 14 (13)
Form No. 8 Request for Controller's Certificate authorising release of sample of micro-organism biological material to an expert
Rule 14 (16)
Unofficial consolidated version – internal document only
FORM NO. 1
Request for the Grant of a Patent
PATENTS ACT, 1992
The Applicant(s) named herein hereby request(s)
the grant of a patent under Part II of the Act
the grant of a short-term patent under Part III of the Act on the basis of the information furnished hereunder.
1. Applicant(s) Name
Address
Description/Nationality
2. Title of Invention
3. Declaration of Priority on basis of previously filed application(s) for same invention
(Sections 25 & 26)
Previous filing date Country in or for which filed Filing No.
4. Identification of Inventor(s) Name(s) of person(s) believed
by Applicant(s) to be the inventor(s) Address
5. Statement of right to be granted a patent (Section 17 (2) (b))
6. Items accompanying this Request — tick as appropriate
(i) prescribed filing fee (£ )
(ii) specification containing a description and claims
specification containing a description only
Drawings referred to in description or claims
(iii) An abstract
(iv) Copy of previous application(s) whose priority is claimed
(v) Translation of previous application whose priority is claimed
(vi) Authorisation of Agent (this may be given at 8 below if this Request is signed by the Applicant(s) )
7. Divisional Application(s)
The following information is applicable to the present application which is made under
Section 24—
Earlier Application No:
............................................................ ............................................................ ... Filing Date:
............................................................ ................................ ............................ ....................
....
Unofficial consolidated version – internal document only
8. Agent
The following is authorised to act as agent in all proceedings connected with the
obtaining of a patent to which this request relates and in relation to any patent granted—
Name Address
9. Address for Service (if different from that at 8)
Signed Name(s):
Capacity (if applicant is a body corporate):
Date
FORM NO. 2
Statement of Inventorship and of right to grant of a patent
PATENTS ACT, 1992
1. Application No.
2. Title of Invention
3. Declaration:
I/We, the Applicant(s) in the above identified application, believe the following person(s) to be the inventor(s) of the invention to which the application relates: Name of Inventor
Address
4. Statement of right of Applicant(s) to be granted a patent
Signed Name(s):
Capacity (if applicant is a body corporate):
Date
Unofficial consolidated version – internal document only
FORM NO. 3
Certificate of grant of a patent
PATENTS ACT, 1992
It is hereby certified that a patent bearing the specification No. has been granted to
in respect of an invention entitled
which invention was the subject of an application for that patent under Part of the Act having a date of filing of
Dated this day of 19
Controller of Patents, Designs and Trade Marks
FORM NO. 4
Payment of Patent Renewal Fee
PATENTS ACT, 1992
1. Patent No.
2. Proprietor
3. Address for Service
4. Fee
Year for which fee paid Amount Paid
5. Name and Address of person transmitting fee (if different from 3 above)
Unofficial consolidated version – internal document only
Signed
Date
FORM NO. 5
Authorisation of patent agent
PATENTS ACT, 1992
I/We, the undersigned, hereby appoint the following to act as my/our agent
Name of Agent
Address
in connection with
............................................................ ............................................................ ... .................
.
............................................................ ............................................................ ....................
.................................
Signed Name(s)
Capacity (if authorisation being given by a body corporate)
Date
Unofficial consolidated version – internal document only
FORM NO. 6
Request for Controller's Certificate authorising release of sample of micro-organism
PATENTS ACT, 1992
1. Name and address of person(s) making this request
2. Application or Patent No.
3. Name of applicant or proprietor
4. Name and address of depositary institution in which the micro-organism is deposited
5. Accession No. of the deposit
6. Declaration and undertaking
I/We, the person(s) making this request declare that the invention disclosed in the
specification of the Application/Patent referred to at 2 above requires for its performance the use of a micro-organism to which the information at 4 and 5 above relates. If a sample of the micro-organism is made available I/we undertake, for the benefit of the Applicant(s)/Proprietor(s), not to make the culture or any culture derived from it available to any other person and not to use the culture or any culture derived from it otherwise than for experimental purposes relating to the subject matter of the invention.
I/We accordingly request that a certificate of the Controller authorising the release of a
sample of the micro-organism be sent to me/us.
Signed
Date
FORM NO. 7
Notification to Controller that a sample of a micro-organism may be made available
only to an expert
PATENTS ACT, 1992
1. Application No.
2. Declaration
I/We, the applicant(s) in the above numbered application, give notice of intention that
samples of the culture identified hereunder are to be available only to experts in accordance with the provisions of Rule 14 of the Patent Rules, 1992.
3. Micro-organism deposit
Name of depository institution in which Address of institution
micro-organism is is deposited
Accession number of deposit
Signed
Unofficial consolidated version – internal document only
Date
FORM NO. 8
Request for Controller's certificate authorising release of sample of micro-organism to expert
PATENTS ACT, 1992
1. Name and address of person(s) making this request
2. Application No.
3. Name of Applicant
4. Name and address of depository institution in which micro-organism is deposited
5. Accession No. of deposit
6. Expert Nominated
Name of Expert Address
7. Declaration
I/We, the person(s) making this request declare that the invention disclosed in the
specification of the application referred to at 2 above requires for its performance the use of a micro-organism to which the information at 4 and 5 above relates.
I/We accordingly request that a certificate of the Controller authorising the release of a sample of the micro-organism be sent to the person nominated at 6.
Signed
Date
8. Undertaking by Expert
I verify that I am the person nominated at 6 and hereby undertake, for the benefit of the
applicant(s), if a sample of the micro-organism is made available to me
— not to make the culture, or any culture derived from it, available to the person
making this request or any other person
— not to use the culture, or any culture derived from it otherwise than for experimental purposes relating to the subject matter of the invention.
Signed
Date
Unofficial consolidated version – internal document only
FORM NO. 1. PATENTS ACT 1992 (as amended)
Reference No. of Applicant or
Authorised Agent ……………….
REQUEST FOR THE GRANT OF A PATENT
The applicant(s) named herein hereby request(s) the grant of:
a Full Term patent (20 year) OR a Short Term patent (10 year)
on the basis of the information furnished hereunder.
1. Applicant(s) (Full name and address of the person or of the company applying.)*
|
Name(s): | |
|
Address(es): | |
|
Nationality(ies): | |
|
Telephone(s): | |
|
Email(s): |
2. Legal Representative
*[Extra sheet available for multiple applicants]
The following is authorised to act as agent in all proceedings connected with the obtaining of a patent to which this request relates and in relation to any patent granted:
|
Name: | |
|
Address: | |
|
Telephone: | |
|
Email: |
3. Address for Service (within the EEA, to which correspondence is to be sent)
|
If different to address at 1 or 2 | |
|
Address: | |
|
Telephone: | |
|
Email: |
|
Please tick box if you wish the Office to correspond with you by email in relation to this application | ||
|
Please tick box if you wish the Office to correspond with you by email in relation to this application | ||
Unofficial consolidated version – internal document only
4. Title of Invention
5. Declaration of Priority (If you have filed any application(s) for the same invention within the last
12 months, please enter the relevant information where a right to priority is claimed)
|
Country: |
Date: |
Number: |
6. Inventor(s)*
*[Extra sheet available for multiple inventors]
7. Statement of right to be granted a Patent
(To be completed if applicant(s) is/are not the sole/joint inventor(s))
Please state how the applicant derived the right from the inventor to be granted a patent
By Deed of Assignment By Contract of Employment
Other (please specify)
8. Divisional Application(s)
The following information is applicable to the present application. YES NO
Earlier Application No: Filing Date of Earlier Application:
Unofficial consolidated version – internal document only
9. Items accompanying this Request
Please tick the appropriate boxes for items sent with this application form.
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(a) Filing fee (€ ) | |
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(b) A written description | |
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(c) A written claims section | |
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(d) Drawings referred to in the descriptions or claims | |
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(e) An abstract | |
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(f) Copy of previous application(s) in respect of which priority is claimed | |
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(g) Translation of previous application in respect of which priority is claimed | |
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(h) Authorisation of agent [Form No. 5] | |
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(i) General authorisation of agent filed on a previous application. | |
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Earlier Application No: |
Filing Date of Earlier Application: |
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(j) Supplementary sheet identifying other applicants | |
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(k) Supplementary sheet identifying other inventors |
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10. Signature: | |
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If a company, state the position within the company of the person signing |
Name in BLOCK CAPITALS
Date:
Unofficial consolidated version – internal document only
Extra Sheet : TO BE ATTACHED TO MAIN BODY OF APPLICATION FORM IF REQUIRED
1. Applicant(s) (Full name and address of the person or of the company applying.)
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Name(s): | |
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Address(es): | |
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Nationality(ies): | |
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Email(s): |
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Address(es): | |
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Email(s): |
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Name(s): | |
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Address(es): | |
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Email(s): |
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Name(s): | |
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Address(es): | |
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Email(s): |
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Name(s): | |
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Address(es): | |
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Nationality(ies): | |
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Telephone(s): | |
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Email(s): |
Unofficial consolidated version – internal document only
Extra Sheet : TO BE ATTACHED TO MAIN BODY OF APPLICATION FORM IF REQUIRED
6. Inventor(s)
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The applicant(s) is/are the sole/joint inventor(s) |
YES |
NO | |
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If no, please specify the full name(s) and address(es) of the inventor(s) below: | |||
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Name(s): | |||
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Address(es): | |||
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Telephone(s): | |||
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Email(s): |
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Name(s): | |
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Address(es): | |
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Email(s): |
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Name(s): | |
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Address(es): | |
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Email(s): |
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Name(s): | |
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Address(es): | |
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Email(s): |
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Name(s): | |
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Address(es): | |
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Email(s): |
Unofficial consolidated version – internal document only
FORM NO. 2. PATENTS ACT 1992 (as amended) Reference No. of Applicant or
Authorised Agent……………….
1. Application Number
2. Title of Invention
3. Declaration
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I/We, the applicant(s), believe the following person(s) to be the inventor(s) of the invention which the above application relates to: | |||
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Name | |||
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Address | |||
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Telephone | |||
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4. Statement of right to be granted a patent
(To be completed if applicant(s) is/are not the sole inventor(s))
(State how the applicant derived the right from the inventor to be granted a patent )
By Deed of Assignment By Contract of Employment
Other (please specify)
5. Signature
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Name in BLOCK CAPITALS | |
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Capacity in company |
If a company state the position within the company of the person signing |
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Date |
Unofficial consolidated version – internal document only
FORM NO. 3.
CERTIFICATE OF GRANT OF A PATENT
In accordance with Section 31 of the Patents Act, it is hereby certified that a patent bearing the specification number ………. has been granted in respect of an invention under Part ….…of the Act, having the following particulars:
Title
Application Number Date of Filing Priority Date
Name of Proprietor(s) Address of Proprietor(s)
Date of Grant
Dated this … day of …. 20...
Unofficial consolidated version – internal document only
FORM NO. 4.
PAYMENT OF PATENT RENEWAL FEE
1. Patent Number
2. Proprietor(s)
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3. Address(es) For Service | |
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Telephone(s) | |
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Email(s) |
4. Fee
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Year for which fee paid |
Amount paid |
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5. Name & address of person transmitting fee (if different from 2 or 3 above) | |
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Name Address | |
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Telephone | |
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Signature
Date
Unofficial consolidated version – internal document only
FORM NO. 5.
AUTHORISATION OF PATENT AGENT
I/We hereby appoint the following to act as my/our agent:
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Name | |
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Address | |
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Telephone | |
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In connection with
Signature(s)
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Name(s) in BLOCK CAPITALS | |
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Capacity in company |
If a company state the position within the company of the person signing |
Date
Unofficial consolidated version – internal document only
FORM NO. 6.
REQUEST FOR CONTROLLER'S CERTIFICATE AUTHORISING THE RELEASE OF A SAMPLE OF BIOLOGICAL MATERIAL
1. Person(s) making the request (Full name and address of each person or company applying)
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Name(s) | ||
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Address(es) | ||
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Telephone(s) | ||
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Email(s) | ||
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Capacity(ies) |
2. Application or Patent Number
3. Applicant or Proprietor(s) (Full name and address(es) of the applicant(s)/proprietor(s))
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Name(s) | ||
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Address(es) | ||
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Telephone(s) | ||
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Email(s) |
4. Depository institution in which the biological material is deposited
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Name | |
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Address | |
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Telephone | |
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5. Accession Number of the deposit
6. Declaration and undertaking
Unofficial consolidated version – internal document only
I/We, the person(s) making this request, declare that the invention disclosed in the specification of the application/patent referred to at 2 above requires for its performance the use of a biological material to which the information at 4 and 5 above
relates. If a sample of the biological material is made available, I/We undertake, for the benefit of the applicant(s)/proprietor(s), not to make the sample or any sample derived from it available to any other person and not to use the sample or sample derived from
it other than for experimental purposes relating to the subject matter of the invention.
I/We accordingly request that a certificate of the Controller authorising the release of a sample of the biological material be sent to me/us.
Signature(s)
Name(s) in BLOCK CAPITALS
Date
Unofficial consolidated version – internal document only
FORM NO. 7. PATENTS ACT 1992 (as amended)
Reference No. of Applicant or
Authorised Agent……………….
NOTIFICATION TO CONTROLLER THAT A SAMPLE OF A BIOLOGICAL MATERIAL MAY BE MADE AVAILABLE ONLY TO AN EXPERT
2. Depository institution in which the biological material is deposited
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Name | |
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Address | |
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Telephone | |
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4. Declaration and undertaking
I/We, applicant(s) in the above numbered application, give notice of intention that samples of the biological material identified hereunder are to be available only to experts in accordance with the provisions of Rule 14 of the Patents Rules 1992.
Signature(s)
Name(s) in BLOCK CAPITALS
Date
Unofficial consolidated version – internal document only
FORM NO. 8. PATENTS ACT 1992 (as amended) Reference No. of Applicant or
Authorised
Agent……………….
REQUEST FOR CONTROLLER'S CERTIFICATE AUTHORISING THE RELEASE OF A SAMPLE OF BIOLOGICAL MATERIAL TO AN EXPERT
1. Person(s) making the request (Full name and address of each person or company applying)
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Name(s) | ||
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Address(es) | ||
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Telephone(s) | ||
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Email(s) | ||
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Capacity(ies) |
3. Applicant(s) (Full name(s) and address(es))
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Name(s) | ||
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Address(es) Telephone(s) | ||
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Address(es) Telephone(s) | ||
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Email(s) |
4. Depository institution in which the biological material is deposited
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Name | |
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Address | |
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Telephone | |
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Unofficial consolidated version – internal document only
6. Expert Nominated:
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Name | ||
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Capacity | ||
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Address | ||
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Address | ||
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Telephone | ||
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7. Undertaking by Expert
I verify that I am the person nominated at 6 and hereby undertake, for the benefit of the applicant(s), if a sample of the biological material is made available to me
- not to make the sample, or any sample derived from it, available to the person
making this request or any other person
- not to use the sample or any sample derived from it other than for experimental
purposes relating to the subject matter of the invention.
Signature
Name in BLOCK CAPITALS
Date
8. Declaration
I/We, the person(s) making this request, declare that the invention disclosed in the specification of the application referred to at 2 above requires for its performance the use of biological material to which the information at 4 and 5 above relates.
I/We accordingly request that a certificate of the Controller authorising the release of a
sample of the biological material be sent to the person nominated at 6.
Signature(s)
Name(s) in BLOCK CAPITALS
Date
Unofficial consolidated version – internal document only
SCHEDULE III
RULES REVOKED
Year and Statutory
Instrument Number
Title
1965, No. 268 Patents Rules, 1965
1970, No. 159 Patents (Amendment) Rules, 1970
1974, No. 20 Patents (Amendment) Rules, 1974
1976, No. 165 Patents (Amendment) Rules, 1976
1978, No. 110 Patents (Amendment) Rules, 1978
1978, No. 241 Patents (Amendment) (No. 2) Rules, 1978
1979, No. 52 Patents (Amendment) Rules, 1979
1979, No. 300 Patents (Amendment) (No. 2) Rules, 1979
1980, No. 186 Patents (Amendment) Rules, 1980
1982, No. 199 Patents (Amendment) Rules, 1982
1983, No. 198 Patents (Amendment) Rules, 1983
1986, No. 76 Patents (Amendment) Rules, 1986
1987, No. 213 Patents (Amendment) Rules, 1987
1987, No. 330 Patents (Amendment) (No. 2) Rules, 1987
GIVEN under my Official Seal this 2nd day of July, 1992. DESMOND O'MALLEY,
Minister for Industry and Commerce.
The fees prescribed by the foregoing Rules are hereby sanctioned by the Minister for
Finance.
GIVEN under the Official Seal of the Minister for Finance this 2nd day of July, 1992. BERTIE AHERN.
EXPLANATORY NOTE
These Rules, made under the Patents Act, 1992 , come into operation on 1st August
1992 which is the day the Minister has appointed for the commencement of the Act.
The Rules prescribe the forms to be used, the fees payable and the procedures to be observed in connection with patents granted under the provisions of the Act. They also contain certain provisions relating to European patent applications and European patents designating the State and to international patent applications filed at the Patents Office.