STATUTORY INSTRUMENTS 
2004 No. 2357 
REGULATORY REFORM 
PATENTS
The Regulatory Reform (Patents) Order 2004 
Made - - - - 22nd September 2004 
Coming into force  
in accordance with article 1(2) 1st January 2005 
     
Whereas:
(a) the Secretary of State for Trade and Industr y (“the Secretary of State”) has consulted( a)
(i) such organisations as appear to her to be representative of interests substantially 
affected by her proposals for this Order, 
(ii) the Comptroller-General of Patents, Designs and Trade Marks, 
(iii) the Law Commission,  
(iv) the National Assembly for Wales, and  
(v) such other persons as she considers appropriate; 
(b) following the consultation mentioned in  recital (a) the Secretary of State considered it 
appropriate to proceed with the making of this Order; 
(c) a document containing the Secretary of State's proposals was laid before Parliament as 
required by section 6 of the Regulatory Reform Act 2001( b) and the period for 
Parliamentary consideration under sec tion 8 of that Act has expired; 
(d) the Secretary of State has had regard to the representations made during this period, in 
particular to the Sixth Report of Sessi on 2003-2004 of the Delegated Powers and 
Regulatory Reform Committee of the House of Lords( c) and the Second Report of 
Session 2003-2004 of the Regulatory Reform  Committee of the House of Commons( d);
(e) a draft of this Order was laid before Parliament with a statement giving details of those 
representations and the changes to the Secretary of St ate's proposals in the light of them;  
(f) the draft was approved by resolution of each House of Parliament;  (g) the Secretary of State is of the opinion that this Order does not remove any necessary 
protection or prevent any person from continui ng to exercise any right or freedom which 
he might reasonably expect to continue to exercise; and 
(a) A consultation document on the deregulation of patents legislation entitled “Towards the Simplification and Rationalisation 
of Patents Formalities” was published by the Patent Office on 24th February 2003. Copies may be obtained from the Patents 
Directorate, The Patent Office, Concept House, Cardiff Road, Newport, NP10 8QQ. 
(b) 2001 c.6. 
(c) Sixth Report published on 30th January 2004, HL32, ISBN 0104849169. 
(d) Second Report published on 17th February 2004, HC337, ISBN 0215015436.  2(h) this Order creates burdens affecting persons in the carrying on of certain activities, and 
the Secretary of State is of the opinion that 
(i) the provisions of this Order, taken as a whole, strike a fair balance between the 
public interest and the interests of the persons affected by the burdens being created,  
and
(ii) the extent to which this Order removes or reduces one or more burdens, or has other 
beneficial effects for persons affected by the burdens imposed by the existing law, 
makes it desirable for this Order to be made; 
Now therefore the Secretary of State, in exercise of the powers conferred by section 1 of the 
Regulatory Reform Act 2001, hereby makes the following Order: 
Citation, commencement and extent 
1.—(1) This Order may be cited as the Regulatory Reform (Patents) Order 2004. 
(2) This Order shall come into force on the first day of the fourth month following the month in 
which it is made. 
(3) This Order extends to the United Kingdom and the Isle of Man. 
Amendment of the Patents Act 1977 
2. The Patents Act 1977( a) shall be amended as follows. 
3. In section 5(2) of that Act (priority date) for the words from “each having” to “date of filing 
the application in suit” there shall be substituted “t he application in suit has a date of filing during 
the period allowed under subsection (2A)(a) or (b) below” and after that subsection there shall be 
inserted— 
“(2A) The periods are— 
(a) the period of twelve months immediately following the date of filing of the earlier 
specified relevant application, or if there is  more than one, of the earliest of them; 
and
(b) where the comptroller has given permission under subsection (2B) below for a late 
declaration to be made under subsection (2) above, the period commencing 
immediately after the end of the period allowed under paragraph (a) above and 
ending at the end of the prescribed period. 
(2B) The applicant may make a request to the comptroller for permission to make a late 
declaration under subsection (2) above. 
(2C) The comptroller shall grant a request made under subsection (2B) above if, and only 
if— 
(a) the request complies with the relevant requirements of rules; and (b) the comptroller is satisfied that the a pplicant’s failure to file the application in suit 
within the period allowed under subsecti on (2A)(a) above was unintentional.”. 
4.—(1) Section 14 of that Act (making of application) shall be amended as follows. 
(2) Subsection (1)(b) and the word “and” immediately preceding it shall cease to have effect. (3) After subsection (1) there shall be inserted— 
“(1A) Where an application for a patent is made, the fee prescribed for the purposes of 
this subsection (“the application fee”) shall be paid not later than the end of the period 
prescribed for the purposes of section 15(10)(c) below.”. 
(4) After subsection (9) there shall be inserted—  
(a) 1977 c.37.  3“(10) Subsection (9) above does not affect the power of the comptroller under section 
117(1) below to correct an error or mistake in a withdrawal of an application for a patent.”. 
5. For section 15 of that Act (date of filing application) there shall be substituted— 
“15 Date of filing application 
(1) Subject to the following provisions of th is Act, the date of filing an application for a 
patent shall be taken to be the earliest date on which documents filed at the Patent Office to 
initiate the application satisfy the following conditions— 
(a) the documents indicate th at a patent is sought; 
(b) the documents identify the person applying for a patent or contain information 
sufficient to enable that person to be c ontacted by the Patent Office; and 
(c) the documents contain either— 
 (i) something which is or appears to be a description of the invention for which a 
patent is sought; or 
 (ii) a reference, complying with the relevan t requirements of rules, to an earlier 
relevant application made by the applicant or a predecessor in title of his. 
(2) It is immaterial for the purposes of subsection (1)(c)(i) above— 
(a) whether the thing is in, or is accompanied by a translation into, a language 
accepted by the Patent Office in accordance with rules; 
(b) whether the thing otherwise complies wi th the other provisions of this Act and 
with any relevant rules. 
(3) Where documents filed at the Patent Office to initiate an application for a patent 
satisfy one or more of the conditions specified in subsection (1) above, but do not satisfy all 
those conditions, the comptroller shall as soon as practicable after the filing of those  
documents notify the applicant of what else must be filed in order for the application to 
have a date of filing. 
(4) Where documents filed at the Patent Office to initiate an application for a patent 
satisfy all the conditions specified in subsection (1) above, the comptroller shall as soon as practicable after the filing of the last  of those documents notify the applicant of— 
(a) the date of filing the application, and 
(b) the requirements that must be complied with, and the periods within which they 
are required by this Act or rules to be complied with, if the application is not to be 
treated as having been withdrawn. 
(5) Subsection (6) below applies where— 
(a) an application has a date of fili ng by virtue of subsection (1) above; 
(b) within the prescribed period the applicant files at the Patent Office— 
 (i) a drawing, or  (ii) part of the description of the in vention for which a patent is sought, and 
(c) that drawing or that part of the description was missing from the application at the 
date of filing. 
(6) Unless the applicant withdraws the drawi ng or the part of the description filed under 
subsection (5)(b) above (“the missing part”) before the end of the prescribed period— 
(a) the missing part shall be treated as included in the application; and 
(b) the date of filing the application shall be the date on which the missing part is filed 
at the Patent Office. 
(7) Subsection (6)(b) above does not apply if— 
(a) on or before the date which is the date of filing the application by virtue of 
subsection (1) above a declaration is made under section 5(2) above in or in 
connection with the application;  4(b) the applicant makes a request for subsection (6)(b) above not to apply; and 
(c) the request complies with the relevant requirem ents of rules and is made within the 
prescribed period. 
(8) Subsections (6) and (7) above do not affect the power of the comptroller under section 
117(1) below to correct an error or mistake. 
(9) Where, after an application for a patent has been filed and before the patent is 
granted— 
(a) a new application is filed by the origin al applicant or his successor in title in 
accordance with rules in respect of any part of the matter contained in the earlier application, and  
(b) the conditions mentioned in subsection (1) above are satisfied in relation to the 
new application (without the new appli cation contravening section 76 below), 
the new application shall be treated as having, as its date of filing, the date of filing the 
earlier application. 
(10) Where an application has a date of filing by virtue of this section, the application 
shall be treated as having been withdrawn if any of the following applies— 
(a) the applicant fails to file at the Patent Office, before the end of the prescribed 
period, one or more claims and the abstract; 
(b) where a reference to an earlier relevant application has been filed as mentioned in 
subsection (1)(c)(ii) above— 
 (i) the applicant fails to file at the Patent Office, before the end of the prescribed 
period, a description of the invention for which the patent is sought;  
 (ii) the applicant fails to file at the Patent Office, before the end of the prescribed 
period, a copy of the application referred to, complying with the relevant 
requirements of rules; 
(c) the applicant fails to pay the application fee before the end of the prescribed 
period; 
(d) the applicant fails, before the end of the prescribed period, to make a request for a 
search under section 17 below and pay the search fee. 
(11) In this section “relevant application” has the meaning given by section 5(5) above.
15A Preliminary examination 
(1) The comptroller shall refer an application for a patent to an examiner for a preliminary 
examination if— 
(a) the application has a date of filing; (b) the application has not been wit hdrawn or treated as withdrawn; and 
(c) the application fee has been paid. 
(2) On a preliminary examination of an application the examiner shall— 
(a) determine whether the application complies with those requirements of this Act 
and the rules which are designated by the rules as formal requirements for the 
purposes of this Act; and 
(b) determine whether any requirements under section 13(2) or 15(10) above remain to 
be complied with. 
(3) The examiner shall report to the comptroller his determinations under subsection (2) 
above. 
(4) If on the preliminary examination of an application it is found that— 
(a) any drawing referred to in the application, or (b) part of the description of the inven tion for which the patent is sought,  5is missing from the application, then the exam iner shall include this finding in his report 
under subsection (3) above .  
(5) Subsections (6) to (8) below apply if a report is made to the comptroller under 
subsection (3) above that not all the formal  requirements have been complied with. 
(6) The comptroller shall specify a period dur ing which the applicant shall have the 
opportunity— 
(a) to make observations on the report, and 
(b) to amend the application so as to comply with those requirements (subject to 
section 76 below). 
(7) The comptroller may refuse the app lication if the applicant fails to amend the 
application as mentioned in subsection (6)(b) above before the end of the period specified 
by the comptroller under that subsection. 
(8) Subsection (7) above does not apply if— 
(a) the applicant makes observations as mentioned in subsection (6)(a) above before 
the end of the period specified by the comptroller under that subsection, and 
(b) as a result of the observations, th e comptroller is satisfied that the formal 
requirements have been complied with. 
(9) If a report is made to the comptroller under subsection (3) above— 
(a) that any requirement of section 13(2) or 15(10) above has not been complied with; 
or
(b) that a drawing or part of the descripti on of the invention has been found to be 
missing,  
then the comptroller shall notify the applicant accordingly.”.
6.—(1) Section 17 of that Act (preliminary examination and search) shall be amended as 
follows. 
(2) For the heading there sh all be substituted “Search”. 
(3) For subsection (1) there shall be substituted— 
“(1) The comptroller shall refer an application for a patent to an examiner for a search if, 
and only if— 
(a) the comptroller has referred the application to an examiner for a preliminary 
examination under section 15A(1) above; 
(b) the application has not been w ithdrawn or treated as withdrawn; 
(c) before the end of the prescribed period— 
 (i) the applicant makes a request to the Patent Office in the prescribed form for a 
search; and 
 (ii) the fee prescribed for the search (“the search fee”) is paid; 
(d) the application includes— 
 (i) a description of the invention for which a patent is sought; and 
 (ii) one or more claims; and 
(e) the description and each of the claims comply with the requirements of rules as to 
language.”. 
(4) Subsections (2) and (3) shall cease to have effect.  
7.—(1) Section 18 of that Act (substantive examination and grant or refusal of patent) shall be 
amended as follows. 
(2) In subsection (1) the words “preliminary examination and ” shall be omitted. (3) In subsection (2) after the words “any examination” there shall be inserted “ carried out 
under section 15A above”.  6(4) In subsection (4) for the words “section 17” there shall be substituted “section 15A”. 
8. After section 20 of that Act there shall be inserted— 
“20A Reinstatement of applications
(1) Subsection (2) below applies where an application for a patent is refused, or is treated 
as having been refused or withdrawn, as a direct consequence of a failure by the applicant to comply with a requirement of this Act or rules within a period which is— 
(a) set out in this Act or rules, or 
(b) specified by the comptroller. 
(2) Subject to subsection (3) below, the comptroller shall reinstate the application if, and 
only if— 
(a) the applicant requests him to do so; (b) the request complies with the relevant requirements of rules; and (c) he is satisfied that the failure to comply referred to in subsection (1) above was 
unintentional. 
(3) The comptroller shall not reinstate the application if— 
(a) an extension remains available under this Act or rules for the period referred to in 
subsection (1) above; or 
(b) the period referred to in subsecti on (1) above is set out or specified— 
 (i) in relation to any proceedings before the comptroller;  (ii) for the purposes of section 5(2A)(b) above; or  (iii) for the purposes of a request under this section or section 117B below. 
(4) Where the application was made by two or more persons jointly, a request under 
subsection (2) above may, with the leave of the comptroller, be made by one or more of 
those persons without joining the others. 
(5) If the application has been published under section 16 above, then the comptroller 
shall publish notice of a request under subsection (2) above in the prescribed manner. 
(6) The reinstatement of an application under this section shall be by order. 
(7) If an application is reinstated under this section the applicant shall comply with the 
requirement referred to in subsection (1) above within the further period specified by the comptroller in the order reinstating the application. 
(8) The further period specified under subsection (7) above shall not be less than two 
months. 
(9) If the applicant fails to comply with subsection (7) above the application shall be 
treated as having been withdrawn on the expi ry of the period specified under that 
subsection. 
20B Effect of reinstatement under section 20A 
(1) The effect of reinstatement under section 20 A of an application for a patent is as 
follows. 
(2) Anything done under or in relation to the application during the period between 
termination and reinstatement shall be treated as valid. 
(3) If the application has been published under section 16 above before its termination 
anything done during that period which would have constituted an infringement of the rights conferred by publication of the applicati on if the termination had not occurred shall 
be treated as an infringement of those rights— 
(a) if done at a time when it was possible for the period referred to in section 20A(1) 
above to be extended, or 
(b) if it was a continuation or repetition of an earlier act infringing those rights.  7(4) If the application has been published under section 16 above before its termination 
and, after the termination and before publication of notice of the request for its 
reinstatement, a person— 
(a) began in good faith to do an act which w ould have constituted an infringement of 
the rights conferred by publication of the ap plication if the termination had not 
taken place, or 
(b) made in good faith effective and serious preparations to do such an act, 
he has the right to continue to do the act or, as the case may be, to do the act, 
notwithstanding the reinstatement of the application and the grant of the patent; but this 
right does not extend to granting a licence to another person to do the act. 
(5) If the act was done, or the preparations were made, in the course of a business, the 
person entitled to the right conferred by subsection (4) above may— 
(a) authorise the doing of that act by an y partners of his for the time being in that 
business, and 
(b) assign that right, or transmit it on deat h (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 the preparations were made. 
(6) Where a product is disposed of to anot her in exercise of a right conferred by 
subsection (4) or (5) above, that other and any person claiming through him may deal with 
the product in the same way as if it had been disposed of by the applicant. 
(7) In this section “termination”, in  relation to an application, means— 
(a) the refusal of the application, or (b) the application being treated as having been refused or withdrawn.”. 
9. In section 28 of that Act (restoration of lapsed patents) for subsection (3) there shall be 
substituted— 
“(3) If the comptroller is satisfied that th e failure of the proprietor of the patent— 
(a) to pay the renewal fee w ithin the prescribed period; or 
(b) to pay that fee and any prescribed additi onal fee within the period of six months 
immediately following the end of that period, 
was unintentional, the comptroller shall by order restore the patent on payment of any 
unpaid renewal fee and any prescribed additional fee.”. 
10.—(1) Section 30 of that Act (nature of, and transac tions in, patents and applications for 
patents) shall be amended as follows. 
(2) In subsection (6)— 
(a) for the words “the parties to the transaction” there shall be substituted “the assignor or 
mortgagor”; 
(b) the words “ or in the case of a body corporate” to the end of the subsection shall be 
omitted. 
(3) After subsection (6) there shall be inserted— 
“(6A) If a transaction mentioned in subsection (6) above is by a body corporate, 
references in that subsection to such a transaction being signed by or on behalf of the assignor or mortgagor shall be taken to include references to its being under the seal of the body corporate.”. 
11. In section 60(6)(b) of that Act (meaning of infringement)— 
(a) after the words “virtue of” there shall be inserted “section 20B(4) or (5) above or”; 
(b) after the words “section 64 below” there shall be inserted “ or section 117A(4) or (5) 
below”.  812. In section 72(1)(d) of that Act (power to revoke patents on application) for the words 
“section 15(4)” there shall be substituted “section 15(9)”. 
13.—(1) Section 76 of that Act (amendments of applications and patents not to include added 
matter) shall be amended as follows. 
(2) In subsection (1) for the words “section 15( 4)” there shall be substituted “section 15(9)”. 
(3) After subsection (1) there shall be inserted— 
“(1A) Where, in relation to an application for a patent— 
(a) a reference to an earlier relevant application has been filed as mentioned in section 
15(1)(c)(ii) above; and  
(b) the description filed under section 15(10)(b)(i) above discloses additional matter, 
that is, matter extending beyond that discl osed in the earlier relevant application, 
the application shall not be allowed to proceed unless it is amended so as to exclude the 
additional matter.”. 
(4) In subsection (2) for the words “section 17( 3)” there shall be substituted “section 15A(6)”. 
(5) After subsection (3) there shall be inserted— 
“(4) In subsection (1A) above “relevant applica tion” has the meaning given by section 
5(5) above.”. 
14. In section 78(3)(b) of that Act (effect of filing an application for a European patent (UK)) for 
the words “specified in section 5(2)” there shall be substituted “allowed under section 5(2A)(a)”. 
15.—(1) Section 81 of that Act (conversion of European patent applications) shall be amended 
as follows. 
(2) In subsection (2)(c) for the words “filing fee” there shall be substituted “application fee”.  (3) In subsection (3)(d) after the words “required by sections” there shall be inserted “15A, ”. 
16.—(1) Section 89B of that Act (adaptation of provisions in relation to international 
application) shall be amended as follows. 
(2) In subsection (1)(b) for the words “specified  in section 5(2)” there shall be substituted 
“allowed under section 5(2A)(a) above”. 
(3) In subsection (5) for the words “under section” there shall be substituted “under sections 
15A, ”. 
17. In section 117 of that Act (correction of errors in patents and applications) after subsection 
(2) there shall be inserted— 
“(3) Where the comptroller is requested to correct an error or mistake in a withdrawal of 
an application for a patent, and— 
(a) the application was published under section 16 above; and (b) details of the withdrawal were published by the comptroller; 
the comptroller shall publish notice of such a request in the prescribed manner. 
(4) Where the comptroller publishes a notice under subsection (3) above, the comptroller 
may only correct an error or mistake under subsection (1) above by order.”. 
18. After section 117 of that Act there shall be inserted— 
“Section 117A Effect of resuscitating a withdrawn application under section 117 
(1) Where— 
(a) the comptroller is requested to correct an error or mistake in a withdrawal of an 
application for a patent; and 
(b) an  application has been resuscitated in accordance with that request, 
the effect of that resuscitation is as follows.  9(2) Anything done under or in relation to th e application during the period between the 
application being withdrawn and its resuscitation shall be treated as valid. 
(3) If the comptroller has published notice of the request as mentioned in section 117(3) 
above, anything done during that period which would have constituted an infringement of the rights conferred by publication of the appli cation if the application had not been 
withdrawn shall be treated as an infringement of t hose rights if it was a continuation or 
repetition of an earlier act infringing those rights. 
(4) If the comptroller has published notice of the request as mentioned in section 117(3) 
above and, after the withdrawal of the app lication and before publication of the notice, a 
person—
(a) began in good faith to do an act which w ould have constituted an infringement of 
the rights conferred by publication of the app lication if the withdrawal had not 
taken place, or 
(b) made in good faith effective and serious preparations to do such an act, 
he has the right to continue to do the act or, as the case may be, to do the act, 
notwithstanding the resuscitation of the application and the grant of the patent; but this right 
does not extend to granting a li cence to another person to do the act. 
(5) If the act was done, or the preparations were made, in the course of a business, the 
person entitled to the right conferred by subsection (4) above may— 
(a) authorise the doing of that act by an y partners of his for the time being in that 
business, and 
(b) assign that right, or transmit it on deat h (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 the preparations were made. 
(6) Where a product is disposed of to anot her in exercise of a right conferred by 
subsection (4) or (5) above, that other and any person claiming through him may deal with 
the product in the same way as if it had been disposed of by the applicant. 
117B Extension of time limits specified by comptroller 
(1) Subsection (2) below applies in relation to a period if it is specified by the comptroller 
in connection with an application for a patent, or a patent. 
(2) Subject to subsections (4) and (5) belo w, the comptroller shall extend a period to 
which this subsection applies if— 
(a) the applicant or the proprietor of the patent requests him to do so; and 
(b) the request complies with the relevant requirements of rules. 
(3) An extension of a period under subsection (2) above expires— 
(a) at the end of the period prescribed for the purposes of this subsection, or (b) if sooner, at the end of the period prescribed for the purposes of section 20 above. 
(4) If a period has already been extended under subsection (2) above— 
(a) that subsection does not apply in  relation to it again;  
(b) the comptroller may further extend th e period subject to such conditions as he 
thinks fit. 
(5) Subsection (2) above does not apply to a peri od specified in relation to proceedings 
before the comptroller.”. 
19. In section 130(1) of that Act (interpretation) the definition of “filing fee” shall be omitted 
and, at the appropriate place, there shall be inserted— 
““application fee” means the fee prescribed for the purposes of section 14(1A) above;”.  10Transitional provisions 
20.—(1) This article applies to an application for a patent where— 
(a) it was initiated by documents containing the in formation mentioned in any of paragraphs 
(a) to (c) of section 15(1) of the Patents Act 1977 (as that section had effect immediately 
before the coming into force of this Order) bei ng filed at the Patent Office; 
(b) those documents were filed before the coming into force of this Order. 
(2) Where this article applies to an application— 
(a) the following provisions have effect in relation to it in the form they had immediately 
before the coming into force of this Order— sections 5, 14(1)(b), 15, 17, 18, 72, 76, 78 and 130(1) of the Patents Act 1977; and 
(b) the following provisions, which are inserted by this Order, have no effect— sections 
14(1A) and 15A of that Act. 
21.—(1) This article applies to an application for a patent where— 
(a) it is treated as an application for a patent under the Patents Act 1977 by reason of a 
direction given under section 81(1) of that Act; 
(b) that direction was given before the coming into force of this Order. 
(2) Where this article applies to an application— 
(a) the following provisions have effect in relation to it in the form they had immediately 
before the coming into force of this Order— sections 5, 14(1)(b), 15, 17, 18, 72, 76, 78, 81 and 130(1); and 
(b) the following provisions, which are inserted by this Order, have no effect— sections 
14(1A) and 15A of that Act. 
22.—(1) This article applies to an international appli cation for a patent (UK) which began the 
national phase before the coming into force of this Order. 
(2) Where this article applies to an application— 
(a) the following provisions have effect in relation to it in the form they had immediately 
before the coming into force of this Order— sections 15, 17, 18 and 89B of the Patents Act 1977; and 
(b) the following provision, which is inserted by this Order, has no effect— section 15A of 
that Act. 
(3) For the purposes of paragraph (1) the national phase shall be treated as beginning at the same 
time as it does under section 89A(3) of the Patents Act 1977. 
(4) In this article— 
 “international application fo r a patent” means an application made under the Patent Co-
operation Treaty; 
“Patent Co-operation Treaty” has the same m eaning as in the Patents Act 1977. 
23. Regulation 9 shall not apply in respect of any patent which ceased to have effect, by reason 
of section 25(3) of the Patents Act 1977, before the coming into force of this Order. 
Sainsbury of Turville,
 Parliamentary Under Secretary of State for Science and Innovation, 
22nd September 2004 Department of Trade and Industry  11EXPLANATORY NOTE 
(This note is not part of the Order) 
This Order amends the Patents Act 1977 (c.37) (“the Act”) to enable it to be administered in 
conformity with the Patent Law Treaty (which was adopted at Geneva on 1st June 2000). 
Article 3 amends section 5 of the Act so that declarations can, when certain conditions are met, be 
made in respect of an application filed more than tw elve months after the date of filing of the 
earlier specified relevant application, or if th ere is more than one, of the earliest of them. 
Article 4 amends section 14 of the Act and removes the requirement to pay a filing fee, but 
replaces it with a requirement to pay an application fee. It also makes it clear that section 117 
applies to correction of errors in withdrawals of applications. 
Article 5 substitutes a new section 15 and inserts a ne w section 15A into the Act. The new section 
15 includes a number of changes, the most signifi cant of these are more relaxed conditions for 
obtaining a date of filing, permitting missing parts of the description and drawings to be filed late and removing the need to request a preliminary examination.  
The new section 15A sets out the requirements of preliminary examination, which unlike its 
predecessor under section 17, will include further duties on the examiner to determine whether the 
requirements under section 13(2) and the new section 15(10) are met. Further if the examiner finds 
that a drawing or part of the description is missing from the application this will be included in his 
report. After the examination, the examiner will have to make a report to the Comptroller, who in 
turn must give the applicant an opp ortunity to rectify any deficiencies. 
Article 6 amends section 17 of the Act. In particular, a new subsection (1) is inserted and 
subsections (2) and (3) are repealed. These amendments are made in consequence of the 
requirements of preliminary examination bei ng moved to the new section 15A. 
Article 7 makes consequential amendments to section 18 of the Act. Article 8 inserts a new section 20A and 20B into the Act. These new sections allow an application 
to be re-instated where it has been refused or treated as refused or withdrawn as a direct 
consequence of the applicant failing to comply with  a requirement of the Act or any rules within 
the applicable time limit. The new section 20B provides similar protection to a those persons affected by a reinstatement under section 20A as is presently provided by section 28A in the case 
of a restoration of a lapsed patent under section 28. 
Article 9 amends section 28 of the Act. This amendment will mean that an applicant will only 
have to show that their failure to pay the renewal  fee on time was unintentional, instead of having 
to prove that they exercised reasonable care to see that the renewal fee was paid on time. 
Article 10 amends section 30 of the Act so that in future only assignors or mortgagors will need to 
sign relevant transactions, such as assi gnments and mortgages of patents. 
Article 11 amends section 60 of the Act. This amendment is part of the granting of third party 
rights by sections 20B and 117A of the Act (inserted respectively by article 8 and 22 of this 
Order). 
Article 12 makes a consequential amendment to section 72 of the Act. 
Article 13 amends section 76 of the Act, so that where a reference to an earlier application is filed 
in place of something that appears to be a description of an invention under section 15(1) (as 
inserted by this Order), the description that is filed under section 15(10) must not include new 
matter that is not contained in the referred to application. There are also some consequential 
changes made to rest of section 76. 
Articles 14 to 16 make consequential amendments to sections 78, 81 and 89B of the Act. Articles 17 and 18 amend section 117 of the Act and insert new sections 117A and 117B into the 
Act. These changes will allow the comptro ller to correct the mistaken withdrawal of an 
application. Similar protection is provided under section 117A as that provided under the new 
section 20B.  
The new section 117B will enable the comptroller to extend certain time limits he has previously 
specified.
Article 19 makes a consequential amendment to section 130. 
Articles 20 to 23 provides transitional provisions, wh ich detail how any pending application will 
be affected by the changes to the Act.  
A Regulatory Impact Assessment together with a more detail ed explanation of the changes made 
by this Order, in particular the impact of the changes have on certain burdens, on any necessary protection and on the maintenance of rights and freed oms, is available either from the Patent 
Office website (www.patent.gov.uk) or by contacting the Patents Directorate, The Patent Office, 
Concept House, Cardiff Road, Newport, NP10 8QQ. 
£3.00
¤ Crown copyright 2004
Printed and published in the UK by The Stationery Office Limited
under the authority and superintendence of Carol Tullo, Controller of Her Majesty’s
Stationery Office and Queen’s Printer of Acts of Parliament.
E1303  9/2004 141303T 19585ISBN 0-11-049857-7
9 780110 498577