STATUTORY INSTRUMENTS. 
S.I. No. 206 of 2017
 
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PATENTS (AMENDMENT) RULES 2017
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S.I. No. 206 of 2017
 
PATENTS (AMENDMENT) RULES 2017
 
I, MARY MITCHELL O'CONNOR, Minister for Jobs, Enterprise and Inno­
vation, in exercise of the powers conferred on me by section 114 of the Patents 
Act 1992 (No. 1 of 1992), hereby make the following Rules: 
1. These Rules may be cited as the Patent (Amendment) Rules 2017. 
2. In these Rules– 
“Act” means Patents Act 1992 (No.1 of 1992); 
“Rules of 1992” means Patent Rules 1992 (S.I. No. 179 of 1992). 
3. The Rules of 1992 are amended– 
(a) by substituting the following for Rule 24: 
“24. (1) The request to the Controller by the applicant to cause a 
report incorporating a written opinion as to patentability to be pre­
pared under section 29 (1) (“the section 29 report and opinion”) 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, the request to the Con­
troller to cause a section 29 report and opinion to be prepared, shall 
be submitted on the actual filing date of the divisional application. 
(2) The search shall be conducted and the section 29 report and 
opinion prepared in accordance with arrangements made for that pur­
pose approved by the Minister. 
(3) If, under the provisions of section 29(2), the applicant wishes 
that a section 29 report and opinion be prepared in relation to any 
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 section 29 report and opinion relating 
to the first invention. 
Notice of the making of this Statutory Instrument was published in 
“Iris Oifigiúil” of 23rd May, 2017. [206] 3
 
(4) The prescribed period for section 29(3) is as follows: 
(a) Two months from the date of issue of the section 29 report 
and opinion to the applicant, in cases where the application 
has been published under section 28 or is due to be so pub­
lished 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. 
(5) Within four months of the date of issue by the Controller to the 
applicant of a copy of the section 29 report and opinion the applicant 
shall, unless the application is withdrawn, comply with the require­
ments 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 submit­
ted to the Controller at any time within the extended period specified 
in the request.”, 
(b) by substituting the following for Rule 25: 
“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 search report accompanied by 
a written opinion as to patentability relating 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.”, 
(c) in Rule 26 by substituting the following for paragraph (1) “The follow­
ing 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 report accompanied by a written opinion 
as to patentability for the application relating to the same invention 
has been prepared by the European Patent Office.”, 
(d) by substituting the following for Rule 27: 
“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 4 [206]
 
Extended European Search Report which is accompanied 
by a written opinion as to patentability 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 Inter­
national Application and the related International Search 
Report and written opinion as to patentability in respect of 
the said invention; or 
(c) where an application for a patent is also made to the United 
Kingdom Intellectual Property Office, a copy of the pub­
lished application for the patent and the related search 
report and written opinion as to patentability 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 and extended 
search opinion 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 together with a written 
opinion as to patentability prepared by the European Pat­
ent 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 
and written opinion or of the specification, 
(b) in the case of the evidence referred to in paragraph (1) (b), 
within two months of the publication of the International 
Search Report and Written Opinion as to patentability, 
(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 incorpor­
ating a written opinion as to patentability (whichever is the [206] 5
 
later), or within two months of the publication of the speci­
fication, 
(d) in the case of the evidence referred to in paragraph (1) (d), 
within two months of the publication of the search report 
and extended search opinion 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 
and written opinion; 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 speci­
fied in the request.”, 
(e) by substituting the following for Rule 28(2): 
“28. (2) Following receipt by him of evidence under Rule 27 the 
Controller, unless the application is withdrawn, shall notify the appli­
cant that the provisions of section 30 (4) shall be complied with within 
four months of the date of the notification.”, 
(f) by inserting the following Rule after Rule 28: 
“Observations by third parties on patentability 
28A.— (1) The Controller shall consider any observations on 
patentability he or she receives under section 30A and shall, subject to 
section 28(5), send to the applicant a copy of the observations. 
(2) The Controller may, if he or she thinks fit, send to the applicant 
a copy of any document referred to in the observations. 
(3) Paragraph (1) does not apply where the observations are 
received after the request for payment of the fee for the grant of a 
patent has issued. 
(4) If the Controller is satisfied that the observations are such as to 
call into question the patentability of the invention which is the subject 
of the application, he or she shall notify the applicant and invite the 
applicant to amend the specification in light of the observations. 
(5) Within two months of the date of issue by the Controller to the 
applicant of a copy of the observations and the notice under paragraph 
(4), the applicant shall, unless the application is withdrawn, comply 
with the requirements of section 29(5) or section 30(5) as appropriate.” 
and 6 [206]
 
(g) by substituting the following for Rule 45(1): 
“45. (1) A request to the Controller under section 66 (1)(a) or (6) 
shall be accompanied by the prescribed fee.”. 
(4) The Rules immediately in force before these Rules come into force shall 
continue to apply to an application for a patent made but not yet determined 
under the Act before 19th May 2017. 
GIVEN under my Official Seal, 
19 May 2017. 
MARY MITCHELL O’CONNOR,
 
Minister for Jobs, Enterprise and Innovation.
 [206] 7
 
EXPLANATORY NOTE
 
(This note is not part of the Instrument and does not purport to be a legal 
interpretation.) 
These amendments to the Patent Rules 1992 arise from changes to the Patents 
Act 1992 which re-introduce substantive examination of Irish patent appli­
cations. The rules set the procedural changes to support substantive examination 
including the submission of a search report and written opinion as to patent­
ability of an invention. Third party observations to the Controller in relation to 
the patentability of applications are also provided for. BAILE ÁTHA CLIATH
 
ARNA FHOILSIÚ AG OIFIG AN tSOLÁTHAIR
 
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