S T A T U T O R Y  I N S T R U M E N T S  
2014 No. 2401 
PATENTS 
The Patents (Amendment) (No. 2) Rules 2014 
Made - - - - 8th September 2014 
Laid before Parliament 9th September 2014 
Coming into force - - 1st October 2014 
The Secretary of State makes the following Rules in  exercise of the powers conferred by sections 
25(3), 25(5), 32, 74A, 77(5A) and 123 of the Patent s Act 1977( a). 
Citation and commencement 
1.  These Rules may be cited as the Patents (Amendment ) (No. 2) Rules 2014 and come into 
force on 1st October 2014. 
Amendments to the Patents Rules 2007 
2.  The Patents Rules 2007( b) are amended as follows. 
New applications governed by rule 19 
3.  In rule 19(4)(a), after “report”, insert “under se ction 18( c)”. 
Payment of fees under section 77(5A) of the Patents  Act 1977 following restoration of a 
European patent (UK) 
4.  In rule 36(1), in the definition of “renewal perio d”, after “payment of a renewal fee”, insert 
“unless a renewal fee is payable by virtue of secti on 77(5A), in which case in this rule and in rules 
39 and 41 “renewal period” means the period in whic h the fee is payable under section 77(5A) and 
rule 41A”. 
5.  In rule 36(2), for “effect at the end of the renew al date.”, substitute— 
“effect— 
(a) where the renewal fee is payable by virtue of s ection 77(5A), at the end of the final 
day of the renewal period; 
                                                                                                                                            
(a) 1977 c.37; section 25(3) was substituted by secti on 8(1) of the Patents Act 2004 (c.16), section 32 was substituted by the 
Patents, Designs and Marks Act 1986 (c.39), Schedul e 1, paragraph 4 and amended by section 13(3) of th e Patents Act 2004 
(there are other amendments to section 32 but none is relevant), section 74A was inserted by section 1 3(1) of the Patents 
Act 2004 and is prospectively amended by section 16 (1) of the Intellectual Property Act 2014 (c.18), a nd section 77(5A) is 
prospectively inserted by the Intellectual Property  Act 2014, Schedule, paragraph 6.  See section 123( 1) for the definitions 
of “prescribed” and “rules”; there are amendments t o section 123 which are not relevant to these Rules . 
(b) S.I. 2007/3291, amended by S.I. 2014/578; there a re other amending instruments but none is relevant.  
(c) Section 18 of the Patents Act 1977 was amended by  the Copyright, Designs and Patents Act 1988 (c.48) , Schedule 5, 
paragraph 4 and S.I. 2004/2357.  2 (b) in any other case, at the end of the renewal da te.” 
6.  For rule 39(2), substitute— 
“(2) If the renewal fee remains unpaid, the comptro ller(a) must send a renewal notice to 
the proprietor of the patent— 
(a) where the renewal fee is payable by virtue of s ection 77(5A), before the end of the 
period of six weeks beginning immediately after the  later of— 
 (i) the end of the renewal period, and 
 (ii) the date on which the comptroller receives no tification of the restoration of 
the patent from the European Patent Office( b); 
(b) in any other case, before the end of the period  of six weeks beginning immediately 
after the end of the renewal period.” 
7.  After rule 41, insert— 
“Payment of fees under section 77(5A) following rest oration of a European patent 
(UK) 
41A.  The prescribed period for the purposes of section 77(5A) is two months.” 
8.  In Schedule 4, Part 1, after the entry in respect of rule 40(1), insert the following entry— 
“rule 41A (payment of fees under section 77(5A) fol lowing restoration of a 
European patent (UK)( c))”. 
Opinions on prescribed matters  
9.  In rule 44(5)(a), omit “(a) or (b)”. 
10.  After rule 93(5), insert— 
“(6) The prescribed matters for the purposes of sec tion 74A(1) are as follows— 
(a) whether a particular act constitutes, or (if do ne) would constitute, an infringement 
of the patent; 
(b) whether, or to what extent, an invention for wh ich the patent has been granted is 
not a patentable invention( d); 
(c) whether the specification of the patent disclos es the invention clearly enough and 
completely enough for it to be performed by a perso n skilled in the art; 
(d) whether the matter disclosed in the specificati on of the patent extends beyond that 
disclosed in the application for the patent as file d or, if the patent was granted on a 
new application, in the earlier application as file d; 
(e) whether the protection conferred by the patent has been extended by an 
amendment which should not have been allowed; 
(f) whether a supplementary protection certificate( e) is invalid under Article 15 of the 
Medicinal Products Regulation( f); and 
                                                                                                                                            
(a) See section 130(1) of the Patents Act 1977 for th e definition of “comptroller” (there are amendments  to section 130(1) 
which are not relevant to that term). 
(b) See section 130(1) of the Patents Act 1977 for th e definition of “European Patent Office” (there are  amendments to section 
130(1) which are not relevant to that term). 
(c) See section 130(1) of the Patents Act 1977 for th e definition of “European patent (UK)” (there are a mendments to section 
130(1) which are not relevant to that term). 
(d) See section 1(1) of the Patents Act 1977 for the meaning of “patentable invention” (section 1(1) was  amended by the 
Patents Act 2004, Schedule 2, paragraphs 1 and 2). 
(e) See section 128B(2) of the Patents Act 1977 for t he definition of “supplementary protection certific ate” (section 128B was 
inserted by S.I. 2007/3293). 
(f) See paragraphs 6(2) and 7(a) of Schedule 4A to th e Patents Act 1977 for the meaning of “the Medicina l Products 
Regulation” (Schedule 4A was inserted by S.I. 2007/ 3293).  3 (g) whether a supplementary protection certificate is invalid under Article 15 of the 
Plant Protection Products Regulation( a).” 
 
 
 
 Baroness Neville-Rolfe  
 Parliamentary Under Secretary of State for Busines s, Innovation and Skills 
8th September 2014 Department for Business, Innovat ion and Skills 
 
EXPLANATORY NOTE 
(This note is not part of the Rules) 
These Rules amend the Patents Rules 2007. 
Rule 3 amends rule 19(4)(a) of the Patents Rules 20 07 to clarify that the only type of examiner’s 
report that is relevant to the conditions which det ermine the deadline for filing a new application 
for a patent as mentioned in section 15(9) of the P atents Act 1977( b) is an examiner’s report made 
under section 18 of the Patents Act 1977. 
Rules 4, 5 and 6 amend parts of the Patents Rules 2 007 which support the operation of sections 
25(3), 25(4), 25(5) and 28 of the Patents Act 1977( c) in respect of the consequences of a failure to 
pay patent renewal fees and the restoration of laps ed patents.  This is to ensure that those sections 
function in respect of renewal fees due by virtue o f section 77(5A) of the Patents Act 1977 in 
respect of a European patent (UK) which has been re voked but subsequently restored under the 
European Patent Convention( d). 
Rule 7 introduces a rule which sets out the period in which unpaid renewal fees are payable in 
respect of a European patent (UK) which has been re voked but subsequently restored for the 
purposes of section 77(5A) of the Patents Act 1977.  
Rule 8 amends the Patents Rules 2007 to provide tha t the period of time introduced by rule 7 
cannot be extended under rule 108 of the Patents Ru les 2007. 
Rule 9 amends rule 44(5)(a) of the Patents Rules 20 07 to update the cross-reference to section 
74A of the Patents Act 1977 given the prospective a mendment of section 74A by section 16(1) of 
the Intellectual Property Act 2014.  Rule 44(5)(a) of the Patents Rules 2007 requires the 
comptroller to enter a note on the register of pate nts that a request for an opinion has been 
received under section 74A(1) of the Patents Act 19 77. 
Rule 10 introduces a new rule which sets out the ma tters in relation to a patent or a supplementary 
protection certificate about which a person may req uest the comptroller to issue an opinion under 
section 74A(1) of the Patents Act 1977.  The matter s include infringement and aspects of validity. 
A full impact assessment in respect of the effect t hat the changes to the patent opinions service 
will have on the costs of business, the voluntary s ector and the public sector was completed in 
preparation for the Intellectual Property Bill (now  the Intellectual Property Act 2014) and is 
available from the Intellectual Property Office, Co ncept House, Cardiff Road, Newport, South 
Wales, NP10 8QQ and is published with the Explanato ry Memorandum alongside this instrument 
on www.legislation.gov.uk. 
                                                                                                                                            
(a) See paragraphs 6(2) and 7(b) of Schedule 4A to th e Patents Act 1977 for the meaning of “the Plant Pr otection Products 
Regulation” (Schedule 4A was inserted by S.I. 2007/ 3293). 
(b) 1977 c.37; section 15(9) was substituted by S.I. 2004/2357. 
(c) 1977 c.37; section 25(3) was substituted by secti on 8(1) of the Patents Act 2004 (c.16), section 25( 4) was amended by 
section 8(2) of the Patents Act 2004 and section 28  was amended by the Copyright, Designs and Patents Act 1988 (c.48), 
Schedule 5, paragraph 6 and Schedule 8, section 8(3 ) of the Patents Act 2004 and S.I. 2004/2357. 
(d) The European Patent Convention was made in Munich  on 5th October 1973 and revised on 17th December 1 991 and 29th 
November 2000, is published in Cmnd 8510 Treaty Ser ies 016/1982 (with the revisions published in Cm 19 53 
Miscellaneous Series 007/1992 and Cm 5615 Miscellan eous Series 018/2002) and is available on the Europ ean Patent 
Office’s website.  Cm 1953 Miscellaneous Series 007 /1992 is out of print but copies are available from  The British Library, 
96 Euston Road, London, NW1 2DB.  4 £4.25 
UK201409097   09/2014   19585 
http://www.legislation.gov.uk/id/uksi/2014/2401 A full impact assessment has not been produced for the other elements of this instrument as no, or 
no significant, impact on the private, voluntary or  public sectors is foreseen. 
  
  
© Crown copyright 2014 
Printed and published in the UK by The Stationery O ffice Limited under the authority and superintenden ce of Carol Tullo, 
Controller of Her Majesty’s Stationery Office and Q ueen’s Printer of Acts of Parliament.