STATUTORY INSTRUMENTS
2007 No. 3291
PATENTS
The Patents Rules 2007
Made - - - - - 19th November 2007
Laid before Parliament 22nd November 2007Coming into force - - 17th December 2007
£10.50STATUTORY INSTRUMENTS 
2007 No. 3291 
PATENTS 
The Patents Rules 2007 
Made  - - - - 19th November 2007 
Laid before Parliament  22nd November 2007 
Coming into force  - - 17th December 2007 
 
CONTENTS 
PART 1 
INTRODUCTORY 
 
1. Citation and commencement 
2. General interpretation 3. The declared priority date 
4. Forms and documents 
 
PART 2 
APPLICATIONS FOR PATENTS 
International exhibitions 
5. International exhibitions 
Declarations of priority 
6. Declaration of priority for the purpos es of section 5(2) (priority date) 
7. Request to the comptroller for permission to make a late declaration under section 
5(2B) 
8. Filing of priority documents to support a declaration under section 5(2) 
9. Translation of priority documents 
Mention of the inventor 
10. Mention of the inventor 
11. Waiving the right to be mentioned 
Form and content of applications 
12. Applications for the grant of patents under sections 14 and 15 13. Biological mate rial and sequence listings 
14. Size and presentation of application 
15. The abstract 
16. Single inventive concept 17. References under section 15(1)(c)(ii) 18. Missing parts  2 New applications 
19. New applications filed as mentioned in section 15(9) 
20. New applications under sections 8(3), 12(6) and 37(4) 
21. Extensions for new applications 
Period for filing contents of application 
22. Periods prescribed for the purposes of sections 15(10) and 17(1) 
Preliminary examination 
23. Preliminary examination under section 15A 24. Correcting a declaration made for the purposes of section 5(2) 
25. Formal requirements 
Publication of application 
26. Publication of application 
Search and substantive examination 
27. Search under section 17 
28. Request for substantive examination under section 18 29. Substantive examination reports 
30. Period for putting application in order 
31. Amendment of application before grant 32. Reinstatement of applications under section 20A 
33. Observations by third parties on patentability 
 
PART 3 
GRANTED PATENTS 
Certificate and amendment 
34. Certificate of grant 
35. Amendment of specification after grant 
Renewal 
36. Renewal of patents: general 37. Renewal of patents: first renewal 38. Renewal of patent s: subsequent renewals 
39. Renewal notice 
40. Restoration of lapsed patents under section 28 
41. Notification of lapsed patent 
Surrender and cancelling entry that licences available as of right 
42. Surrender 43. Application for, and cancellation of, an ent ry that licences are available as of right 
 
PART 4 
THE REGISTER AND OTHER INFORMATION 
The register 
44. Entries in the register 
45. Advertisement in relation to register 
46. Copies of entries in, or extract s from, the register and certified facts 
47. Registrations of transactions,  instruments and events 
Copies of documents and corrections in relation to the register 
48. Copies of documents 
49. Correction of name, address and address for service 
50. Request for correction of error 
Requests for information or documents 
51. Restrictions on inspection of documents  3 52. Request for information where section 118(4) applies 
53. Confidential documents 
54. Requests for certain information 
55. Bibliographic information about  an unpublished application 
 
PART 5 
EUROPEAN PATENTS (UK) 
Translations 
56. Translations of European patents (UK) 
57. Corrected translations 
Conversion requests 
58. Procedure for making a conversion request under section 81(2)(b)(i) 59. Procedure for making a conversion request under section 81(2)(b)(ii) 
60. Request for substantive examination following a direction under section 81 
Obligations to other contracting parties to the European Patent Convention 
61. Recognition of patent decision of competent authorities of other states 
62. Procedure for obtaining evidence for proceedings under the European Patent 
Convention 
63. Communication of information to the European Patent Office 
 
PART 6 
INTERNATIONAL APPLICATIONS 
Interpretation 
64. Interpretation relating to international applications 
Filing at the Patent Office 
65. Filing of international appli cations at the Patent Office 
Beginning the national phase, international exhibitions and altered prescribed periods 
66. Beginning of national phase 
67. International exhibitions 
68. Altered prescribed periods 
Translations 
69. Necessary translations under section 89A(3) and (5) 70. Requirements of necessary translations 
Application deemed withdrawn or filing date refused under the Patent Co-operation Treaty 
71. Directions under section 89(3) and (5) 
72. Circumstance prescribed for the purposes of section 89(3) 
 
PART 7 
PROCEEDINGS HEARD BEFORE THE COMPTROLLER 
Introductory 
73. Scope and interpretation 74. Overriding objective 
75. Publication of notices 
Conduct of hearings 
76. Starting proceedings 
77. Notification of the parties 
78. The counter-statement 
79. Copies of documents 80. Evidence rounds and the hearing 81. Alteration of time limits  4 82. General powers of the comptroller in relation to proceedings before him 
83. Striking out a statement of case and summary judgment 
84. Hearings in public 
Miscellaneous 
85. Security for costs or expenses 
86. Powers of comptroller to compel attendance of witnesses and production of 
documents 
87. Evidence in proceedings before the comptroller 
88. Proceedings in Scotland 
89. Proceedings started under section 46(3) by a person other than the proprietor 90. Licences following entitlement proceedings 91. Period prescribed for applications by employee for compensation 
 
PART 8 
OPINIONS 
Interpretation 
92. Interpretation 
Request for opinion 
93. Request for an opinion under section 74A 
94. Refusal or withdrawal of request 
95. Notification and advertisement of request 96. Submission of observations and observations in reply 
97. Issue of the opinion 
Review of opinion 
98. Review of opinion 
99. Procedure on review 
100. Outcome of review 
 
PART 9 
MISCELLANEOUS 
Agents and advisers 
101. Agents 
102. Appointing advisers 
Address for service 
103. Address for service 104. Failure to furnish an address for service 
Corrections and remission of fees 
105. Correction of errors 106. Remission of fees 107. Correction of irregularities 
Time limits and delays 
108. Extension of time limits 109. Extension of time limits specified by comptroller 
110. Interrupted days 
111. Delays in communication services 
Copies available to the comptroller 
112. Copies available to the comptroller 
Translations 
113. Translations 114. Translations in proceedings in rel ation to a European patent (UK)  5 115. Establishing the accuracy of translations 
Supplementary Protection Certificates 
116. Supplementary prot ection certificates 
Publications 
117. The journal 
118. Reports of cases 
119. Publication and sale of documents 
Transitional provisions and revocations 
120. Transitional provisions and revocations 
 
 SCHEDULE 1 — BIOLOGICAL MATERIAL 
 SCHEDULE 2 — FORMAL AND OTHER REQUIREMENTS  PART 1 — REQUIREMENTS: ALL DOCUMENTS 
 PART 2 — REQUIREMENTS: DOCUMENTS (OTHER THAN 
DRAWINGS) 
 PART 3 — REQUIREMENTS: DRAWINGS 
 PART 4 — OTHER REQUIREMENTS  SCHEDULE 3 — PROCEEDINGS HEARD BEFORE THE COMPTROLLER  PART 1 — APPLICATIONS, REFERENCES AND REQUESTS 
 PART 2 — OPPOSITIONS WHICH START PROCEEDINGS 
 PART 3 — OPPOSITIONS AFTER PROCEEDINGS HAVE STARTED  PART 4 — RULES WHICH APPLY TO ANY PROCEEDINGS HEARD 
BEFORE THE COMPTROLLER 
 PART 5 — RULES WHICH APPLY TO A REVIEW OF AN OPINION  SCHEDULE 4 — EXTENSION OF TIME LIMITS 
 PART 1 — PERIODS OF TIME THAT CANNOT BE EXTENDED 
 PART 2 — PERIODS OF TIME THAT MAY BE EXTENDED UNDER 
RULE 108(2) OR 108(3) 
 PART 3 — PERIODS OF TIME TO WHICH RULE 108(5) AND 108(7) 
RELATE 
 SCHEDULE 5 — TRANSITIONAL PROVISIONS  SCHEDULE 6 — REVOCATIONS 
The Secretary of State makes the following Rul es in exercise of the powers conferred upon him by 
sections 14(6), 25(5), 32, 74B, 77(9), 92, 123, 125A and 130(2) of the Patents Act 1977( a). 
In accordance with section 8 of the Tribunals and Inquiries Act 1992( b), the Secretary of State has 
consulted the Administrative Justice and Tribunals Council. 
                                                                                                                                                              
 
 
(a) 1977 c. 37; section 74B was inserted by the Patents Act 2004 (c.16); section 123 was amended by the Copyright, Designs 
and Patents Act 1988 (c. 48), Schedule 5, paragraph 29, and the Patents Act 2004 (c.16), Schedule 2, paragraph 26; section 125A was inserted by the Copyright, Designs and Patents Act 1988, Schedule 5, paragraph 30, and was amended by SI 2000/2037. 
(b) 1992 c. 53; the definition of “Council” has been amended by the Tribunals, Courts and Enforcement Act 2007 (c.15), 
Schedule 8, paragraph 30.   6 PART 1 
INTRODUCTORY 
Citation and commencement 
1. These Rules may be cited as the Patents Rules 2007 and shall come into force on 17th 
December 2007. 
General interpretation 
2.—(1) In these Rules— 
“the Act” means the Patents Act 1977 and “section”, unless the contrary intention appears, 
means a section of the Act; 
“application number” includes file number; “compliance date” means the last day of the compliance period; “compliance period” means the period prescribed by rule 30; “declared priority date” has the meani ng given to it by rule 3(1); 
“initiation date” means the date on which a new application was initiated by documents, 
mentioned in section 15(1), being file d at the Patent Office; 
“new application” means a new application filed under section 8(3), 12(6) or 37(4) or as 
mentioned in section 15(9); 
“no declared priority date” has the m eaning given to it by rule 3(2); 
“Patents Form” has the meaning given to it by rule 4(1); 
“priority application” means an earlier relevant application specified in a declaration for the 
purposes of section 5(2); 
“sequence” and “sequence listing” have the same meaning as they have under the Patent Co-
operation Treaty; 
“start date” means, in relation to rules 106(6)(a) and 116 on supplementary protection 
certificates, the first day following the day on which the basic patent expires; and 
“termination” has the meaning given by section 20B(7) and “terminated” shall be construed 
accordingly. 
(2) Where a period of time has been altered under rules 20(4), 71(7), 81 or 107 to 111, any 
reference in these Rules to the period of time shall be construed as a reference to the period as 
altered. 
(3) For the purposes of these Rules a document is available to the comptroller where— 
(a) it is in electronic storage (whether in the Patent Office or elsewhere) and he can access 
it by using electronic communications; or 
(b) it is kept at the Patent Office, 
and he has been furnished with sufficient inform ation to obtain a copy of the document. 
(4) But a document may be treated as unavailable to the comptroller where— 
(a) its accuracy cannot be verified to his satisfaction; or 
(b) he has to pay to access it. 
The declared priority date 
3.—(1) For the purposes of these Rules the “declared priority date” is the date of filing of the 
earliest relevant application specified in a decl aration made for the purposes of section 5(2) in, or 
in connection with, an application in suit. 
(2) For the purposes of these Rules there is “no declared priority date” if—  7 (a) no declaration has been made for the purposes of section 5(2); or 
(b) every declaration made has been withdrawn or disregarded before the end of the 
relevant period. 
(3) For the purposes of paragraph (2)(b) the relevant period ends— 
(a) in the case of an application which falls to be treated as an application for a patent 
under the Act by virtue of a direction under secti on 81, when that direction is given; 
(b) in the case of an international application for a patent (UK), when the national phase of 
the application begins; or 
(c) in any other case, when preparations for the application’s publication have been 
completed by the Patent Office. 
(4) In this rule references to declarations made for the purposes of section 5(2) include 
declarations treated as made for those purposes. 
Forms and documents 
4.—(1) The forms of which the use is required by th ese Rules are those set out in directions 
under section 123(2A) and are referred to in these Rules as Patents Forms. 
(2) Such a requirement to use a form is satisfied by the use of a form which is acceptable to the 
comptroller and contains the information required by the form as so set out. 
(3) Such directions must be published in accordance with rule 117(c). 
(4) Unless the comptroller otherwise directs, to file any form or other document under the Act 
or these Rules only one side of each sheet of paper must be used and the other side must remain 
blank. 
(5) But where the information is delivered in electronic form or using electronic 
communications— 
(a) a requirement under these Rules to use a form; and 
(b) the requirements in paragraph (4), 
do not apply. 
(6) Where any form or other document is delivered to the comptroller in electronic form or 
using electronic communications, any requirement in these Rules for multiple copies of that form 
or document to be filed does not apply. 
PART 2 
APPLICATIONS FOR PATENTS 
 
International exhibitions 
International exhibitions 
5.—(1) The statement mentioned in section 2(4)(c) th at an invention has been displayed at an 
international exhibition must be in writing. 
(2) The prescribed period for the purposes of section 2(4)(c)  is four months beginning with the 
date of filing. 
(3) But paragraphs (1) and (2) do not apply where rule 67(2) applies. 
(4) The written evidence required by section 2(4)(c) must be in the form of— 
(a) a certificate issued by the authority responsible for the international exhibition; and 
(b) a statement, duly authenticated by that authority, identifying the invention as being the 
invention displayed at the exhibition.  8 (5) The certificate must include th e opening date of the exhibiti on (or if later, the date on 
which the invention was first displayed). 
(6) The comptroller may publish a statement in the journal that a particular exhibition falls 
within the definition of “international exhibition” in  section 130(1) (interpretation). 
 
Declarations of priority 
Declaration of priority for the pur poses of section 5(2) (priority date)  
6.—(1) Subject to paragraph (2) and rule 7(9), a declaration for the purposes of section 5(2) 
must be made at the time of f iling the application for a patent. 
(2) Subject to rule 7(9), a declaration for the pu rposes of section 5(2) may be made after the 
date of filing provided that— 
(a) it is made on Patents Form 3; 
(b) it is made before the end of the period of sixteen months beginn ing immediately 
following the date of filing of the earlier relev ant application (or if there is more than 
one, the earliest of them) specified in that, or any earlier, declaration; and 
(c) the condition in paragraph (3) is met. 
(3) The condition is that— 
(a) the applicant has not made a request under section 16(1) for publication of the 
application during the period prescrib ed for the purposes of that section; or 
(b) any request made was withdrawn before preparations for the application’s publication 
have been completed by the Patent Office. 
(4) A declaration for the purposes of section 5(2) must specify— 
(a) the date of filing of each earlier relevant application; and 
(b) the country it was filed in or in respect of. 
(5) In the case of a new application filed as mentioned in section 15(9), no declaration shall be 
made which has not also been made in, or in  connection with, the earlier application. 
Request to the comptroller for permission to make a late declaration under section 5(2B) 
7.—(1) The period prescribed for the purposes of section 5(2A)(b) is two months. 
(2) Subject to paragraph (4), a request under section 5(2B) must be— 
(a) made on Patents Form 3; and 
(b) supported by evidence of why the application in suit was not filed before the end of the 
period allowed under section 5(2A)(a). 
(3) Where that evidence does not accompany the request, the comptroller must specify a period 
within which the evidence must be filed. 
(4) In relation to a new application, a request under section 5(2B) may be made in writing, 
instead of on Patents Form 3, and no evidence shall accompany it. 
(5) Subject to paragraph (6) and rule 66(3), a request under section 5(2B) may only be made 
before the end of the period allowed under section 5(2A)(b). 
(6) Where a new application is filed after the end of the period allowed under section 5(2A)(b), 
a request under section 5(2B) may be made on the initiation date. 
(7) A request under section 5(2B) may only be made where— 
(a) the condition in paragraph (8) is met; or 
(b) the request is made in relation to an int ernational applicati on for a patent (UK). 
(8) The condition is that—  9 (a) the applicant has not made a request under section 16(1) for publication of the 
application during the period prescrib ed for the purposes of that section; or 
(b) any request made was withdrawn before preparations for the application’s publication 
have been completed by the Patent Office. 
(9) Where an applicant makes a request under section 5(2B), he must make the declaration for 
the purposes of section 5(2) at the same time as making that request. 
Filing of priority documents to support a declaration under section 5(2) 
8.—(1) In respect of each priority application to which this paragraph applies the applicant 
must, before the end of the relevant period, furnish to the comptroller the application number of 
that application; otherwise the comptrolle r must disregard the declaration made for the purposes of 
section 5(2), in so far as it relates to the priority application. 
(2) In respect of each priority application to which this paragraph applies the applicant must, 
before the end of the relevant period, furnish to the comptroller a copy of that application— 
(a) duly certified by the authority with which it was filed; or 
(b) otherwise verified to the satisfaction of the comptroller, 
otherwise the comptroller must disregard the declaration made for the purposes of section 5(2), in 
so far as it relates to the priority application. 
(3) Paragraph (1) applies to every priority app lication except where the application in suit is an 
international application for a patent (UK) and th e application number of the priority application 
was indicated in compliance with  the Patent Co-operation Treaty. 
(4) Paragraph (2) applies to every priority application except where— 
(a) the application in suit is an international app lication for a patent (UK) and a certified 
copy of the priority application was filed in  compliance with the Patent Co-operation 
Treaty; or 
(b) the priority application or a copy of the priority application is available to the 
comptroller. 
(5) For the purposes of this rule the relevant period is sixteen months beginning with the 
declared priority date, subject to rule 21. 
Translation of priority documents 
9.—(1) The comptroller may direct the applicant to comply with the requirements of paragraph 
(4), if— 
(a) a copy of the priority application has been— 
(i) furnished in accordance with rule 8(2), 
(ii) filed in compliance with the European Patent Convention, 
(iii) filed in compliance with the Patent Co-operation Treaty, or 
(iv) made by the comptroller in accordance with rule 112(2); 
(b) that copy is in a language other than English or Welsh; and 
(c) the matters disclosed in the priority appl ication are relevant to the determination of 
whether or not an invention, to which the appli cation in suit relates, is new or involves 
an inventive step. 
(2) In his direction under paragraph (1), the comptroller  shall specify a period within which the 
applicant must comply with the requirements of paragraph (4). 
(3) But the comptroller shall not specify a period that ends after the grant of the patent. 
(4) Where the comptroller has given a directi on under paragraph (1), the applicant must, before 
the end of the period specified by the comptroller, file— 
(a) an English translation of th e priority application; or  10(b) a declaration that the application in suit is a complete translation into English of the 
priority application, 
otherwise the comptroller must disregard the declaration made for the purposes of section 5(2), in 
so far as it relates to the priority application. 
 
Mention of the inventor 
Mention of the inventor 
10.—(1) An inventor or joint inventor of an invention, if not mentioned in any published 
application for a patent, or in any patent grante d, for the invention, must be mentioned in an 
addendum or an erratum to the application or patent. 
(2) A person who alleges that any person ought to have been mentioned as the inventor or joint 
inventor of an invention may apply to the co mptroller for that person to be so mentioned— 
(a) in any patent granted for the invention; and 
(b) if possible in any published applica tion for a patent for the invention, 
and, if not so mentioned, in the manner prescribed by paragraph (1). 
(3) Subject to rules 21, 58(4), 59(3) and 68(2), the peri od prescribed for the purposes of section 
13(2) is sixteen mont hs beginning with— 
(a) where there is no declared priority date, the date of filing of the application; or 
(b) where there is a declared priority date, that date. 
(4) A statement filed under section 13(2) mu st be made on Patents Form 7. 
Waiving the right to be mentioned 
11.—(1) The inventor may, before preparations for th e application’s publication have been 
completed by the Patent Office, apply to the comptroller in writing to waive his right— 
(a) to have his name and address menti oned as those of the inventor; or 
(b) to have his address mentioned as that of the inventor. 
(2) An application by an inventor under paragraph (1)(a) must— 
(a) include his reasons for making the application; and 
(b) be accepted by the comptroller where the comptroller is satisfied by those reasons. 
(3) An application by an inventor under paragraph (1)(b) must be accepted by the comptroller. 
(4) Where the comptroller has accepted an inventor’s application to make a waiver under this 
rule, the inventor may apply to  the comptroller to end that waiver. 
(5) The comptroller may, if he thinks fit, accept an application to end a waiver, and his 
acceptance may be made subject to such conditions as he may direct. 
(6) An application under paragraph (1)(a) or (b) or under paragraph (4) may also be made by a 
person who is not the inventor, but who has been identified as such for the purposes of section 13(2). 
(7) Where a person makes an application in reliance on paragraph (6), the reference in this rule 
to an application to waive his right to have his name and address (or his address) mentioned shall 
be construed as a reference to an application not to have his name and address (or his address) 
mentioned; and paragraphs (4) and (5) shall be construed accordingly. 
 
Form and content of applications 
Applications for the grant of patents under sections 14 and 15 
12.—(1) A request for the grant of a patent must be made on Patents Form 1.  11(2) Where the documents filed at the Patent Office to  initiate an application for a patent do not 
include the applicant’s name and address, the co mptroller shall notify the applicant that his name 
and address are required. 
(3) Where the applicant has been so notified, he must, before the end of the period of two 
months beginning with the date of the notifi cation, file his name and address; otherwise the 
comptroller may refuse his application. 
(4) The specification mentioned in section 14(2)(b) must be preceded by the title of the 
invention and must be set out in the following order— 
(a) description; 
(b) the claim or claims; and 
(c) any drawing referred to in the description or any claim. 
(5) But paragraph (4) does not apply where an application is delivered in electronic form or 
using electronic communications. 
(6) The title of the invention must be short a nd indicate the matter to which the invention 
relates. 
(7) Where the specification includes drawings, the descri ption must include a list of drawings 
briefly describing each of them. 
(8) Where— 
(a) the documents filed at the Patent Office to initiate an application for a patent include 
something which is or appears to be a descrip tion of the invention in a language other 
than English or Welsh; and 
(b) the applicant has not filed a translation into English or Welsh of that thing, 
the comptroller shall notify the a pplicant that a translation is required. 
(9) Where the applicant has been so notified, he must, before the end of the period of two 
months beginning with the date of th e notification, file a transla tion; otherwise the comptroller 
may refuse his application. 
Biological materi al and sequence listings 
13.—(1) The provisions of Schedule 1 prescribe the circumstances in which the specification of 
an application for a patent, or of a patent, for an invention which involves the use of or concerns 
biological material is to be treated as disclosing the inventi on in a manner which is clear enough 
and complete enough for the invention to be performed by a person skilled in the art. 
(2) Where the specification of an application for a patent discloses a sequence, it must include 
a sequence listing. 
(3) Where an applicant has not provided a sequence listing on filing the application, the 
comptroller may specify a period within which th e applicant must provide the sequence listing; 
and if it is not provided within this peri od, the comptroller may refuse the application. 
(4) Where a sequence listing is provided after the date of filing the application, the listing must 
be accompanied by a declaration that it does not contain matter extending beyond the sequence disclosed in the application. 
(5) The sequence listing must comply with any requirements and standards adopted under the 
Patent Co-operation Treaty for the presentation of sequence listings in patent applications. 
(6) A sequence listing shall, if it is reasonably possib le, be delivered to the comptroller in 
electronic form or using el ectronic communications, even where the application for the patent is 
not delivered in electronic form or using electronic communications. 
(7) A sequence listing may be set out either in th e description or at the end of the application, 
but if set out at the end of the application rule 12(4) shall not apply.  12Size and presentation of application 
14.—(1) The contents of all document s (including annotations to  drawings) contained in an 
application for a patent must be in English or Welsh. 
(2) The requirements for the documents contained in  an application for a patent (other than 
drawings) are set out in Parts 1 and 2 of Schedule 2. 
(3) The requirements for a drawing contained in an app lication are set out in Parts 1 and 3 of 
that Schedule. 
(4) All documents contained in an application (including drawings) must comply with the 
requirements set out in Part 4 of that Schedule. 
(5) Paragraphs (2) and (3) do not apply to an appli cation, or a sequence listing contained in an 
application, which is delivered in electroni c form or using electroni c communications. 
The abstract 
15.—(1) The abstract must start with a title for the invention. 
(2) The abstract must contain a conci se summary of the matter contained in the specification. 
(3) That summary must include— 
(a) an indication of the tech nical field to which the invention belongs; 
(b) a technical explanation of the invention; 
(c) the principal use of the invention. 
(4) Where the specification contains more than one drawing, the abstract must include an 
indication of the drawing which should acc ompany the abstract when it is published. 
(5) Where it appears to the comptroller that a drawing included in the specification better 
characterises the invention he sh all publish it with the abstract. 
(6) Where a feature of the invention included in the abstract is illustrated in a drawing, the 
feature must be followed by the reference for that feature used in that drawing. 
(7) The abstract must not contain any statement on the merits or value of the invention or its 
speculative application. 
Single inventive concept 
16.—(1) For the purposes of the Act, two or more inventions shall be treated as being so linked 
as to form a single inventive concept where there exists between those inventions a technical 
relationship which involves one or more of the same or corresponding speci al technical features. 
(2) In paragraph (1) “special technical features” means those technical features which define a 
contribution which each of the claimed inventions, considered as a whole, makes over the prior art. 
References under section 15(1)(c)(ii) 
17.—(1) A reference made under section 15(1)(c)(ii) must include— 
(a) the date of filing of the earlier relevant application; 
(b) its application number; and 
(c) the country it was filed in or in respect of. 
(2) Subject to paragraph (3), the copy of the app lication provided under section 15(10)(b)(ii) 
must— 
(a) be duly certified by the authority with wh ich it was filed or otherwise verified to the 
satisfaction of the comptroller; and 
(b) where it is in a language other than English or Welsh, be accompanied by— 
(i) a translation into English of that application, or  13(ii) a declaration that the description file d under sub-paragraph (i) of section 15(10)(b) is a 
complete and accurate translation into English of the description contained in the 
application provided under sub-paragraph (ii) of that provision. 
(3) Where the application or a copy of the application is available to the comptroller it shall, 
for the purposes of section 15(10)(b)(ii), be treated as having been filed in accordance with rules. 
Missing parts 
18.—(1) The period prescribed for the purposes of section 15(5)(b) and (6) is the period 
beginning with the date of filing of the application for a patent and ending with the date of the 
preliminary examination. 
(2) But where the applicant is notified under sec tion 15A(9) that a drawing or part of the 
description of the invention has been found to be missing, the period prescribed for the purposes 
of section 15(5)(b) and (6) shall be the period of tw o months beginning with the date of the 
notification. 
(3) An applicant may only withdraw a missing pa rt by giving written notice to the comptroller. 
(4) A request made under section 15(7)(b) must— 
(a) be made in writing; 
(b) include sufficient information to  identify where in the prio rity application the contents 
of the document filed under section 15(5)(b) were included; and 
(c) be made before the end of the period prescribed for the purpose of section 15(5)(b). 
(5) Any request under section 15(7)(b) shall be considered never to have been made where— 
(a) the priority application does not contain ev ery missing part filed under section 15(5); or 
(b) the applicant fails, before the end of the relevan t period, to furnish to the comptroller 
copies of all earlier relevant applications— 
(i) duly certified by the authority with which they were filed, or 
(ii) otherwise verified to the satisfaction of the comptroller. 
(6) But paragraph (5)(b) does not apply in respect of an earli er relevant application where that 
application or a copy of the applicati on is available to the comptroller. 
(7) For the purposes of paragraph 5(b) the relevant period is— 
(a) sixteen months beginning with the declared priority date; or 
(b) if it expires earlier, the period of four mont hs beginning with the date on which the 
request was made under section 15(7)(b). 
 
New applications 
New applications filed as mentioned in section 15(9) 
19.—(1) A new application for a patent may be filed as mentioned in section 15(9)— 
(a) before the end of the relevant period; or 
(b) if earlier, before the earlier application is terminated or withdrawn. 
(2) Such an application must include a statement that it is file d as mentioned in section 15(9). 
(3) For the purposes of this rule the relevant period is— 
(a) where an applicant is notified under section 18(4) that his earlier application complies 
with the requirements of the Act and these Rules, two months beginning with the date 
of that notification; or 
(b) in any other case, the period ending three months before the compliance date of the 
earlier application.  14New applications under sections 8(3), 12(6) and 37(4) 
20.—(1) The period prescribed for filing a new appli cation under section 8(3) or section 12(6) is 
the relevant period. 
(2) A new application for a patent may be filed under section 37(4) before the end of the 
relevant period. 
(3) For the purposes of this rule the relevant period is— 
(a) where the comptroller’s decision to ma ke an order under those provisions is not 
appealed, three months beginning with the date on which the order was made; or 
(b) where that decision is appealed, three months beginning with the date on which the 
appeal was finally disposed of. 
(4) But the comptroller may, if he thinks fit, s horten the relevant period after giving the parties 
such notice and subject to such conditi ons as the comptroller may direct. 
Extensions for new applications 
21.—(1) Where a new application is filed— 
(a) the period prescribed for the purposes of section 13(2) is— 
(i) two months beginning with its initiation date, or 
(ii) if it expires later, the period prescribed by rule 10(3); and 
(b) the relevant period for the purposes of rule 8 is— 
(i) two months beginning with its initiation date, or 
(ii) if it expires later, the period specified in rule 8(5), 
and the reference in rule 10(3) to the date of filing of the application is a reference to the date of 
filing of the earlier application.  
(2) But where the new application is filed less than six months before the compliance date— 
(a) the period prescribed for the purposes of section 13(2) is the period ending with its 
initiation date; and 
(b) the relevant period for the purposes of rule 8 is the period ending with its initiation date. 
(3) The second requirement in Schedule 1 must be complied with— 
(a) on the initiation date; or 
(b) if it expires later, before the end of the relevant period specified in paragraph 3(3) of 
that Schedule. 
 
Periods for filing contents of application 
Periods prescribed for the purposes of sections 15(10) and 17(1) 
22.—(1) The period prescribed for the purposes of section 15(10)(a) and (b)(i) is the relevant 
period. 
(2) Subject to rules 58(4), 59(3) and 68(3), the period prescribed for the purposes of section 
15(10)(c) and (d) and section 17(1) is the relevant period. 
(3) The period prescribed for the purpose of sec tion 15(10)(b)(ii) is four months beginning 
with the date of filing of the application. 
(4) But paragraphs (1) to (3) do not apply to a new application. 
(5) In relation to a new application— 
(a) the period prescribed for the purposes of section 15(10)(a), (b)(i), (c) and (d) and 
section 17(1) is— 
(i) two months beginning with its initiation date, or  15(ii) if it expires later, the relevant period; and 
(b) the period prescribed for the purposes of section 15(10)(b)(ii) is— 
(i) two months beginning with its initiation date, or 
(ii) if it expires later, the period of four months beginning with the date of filing of the 
earlier application, 
and the reference in paragraph (7) to the date of filing of the application is a reference to the date 
of filing of the earlier application. 
(6) But where the new application is filed less than six  months before the compliance date, the 
period prescribed for the purposes of section 15(10)(a) to (d) and section 17(1) is the period 
ending with its initiation date. 
(7) For the purposes of this rule the relevant period is— 
(a) where there is no declared priority date, twelve months beginning with the date of filing 
of the application; or 
(b) where there is a declared priority date— 
(i) twelve months beginning with  the declared priority date, or 
(ii) if it expires later, the period of two months beginning with the date of filing of the 
application. 
 
Preliminary examination 
Preliminary examination under section 15A 
23.—(1) On the preliminary examination under section 15A of an application the examiner shall 
determine whether the application complies with the requirements of rules 6 to 9. 
(2) The examiner must report to the comptroller his determinations under paragraph (1), and 
the comptroller must notify the applicant accordingly. 
Correcting a declaration made for the purposes of section 5(2) 
24.—(1) Where, on the preliminary examination under section 15A of an application, the 
examiner finds that a declaration made for the purposes of section 5(2) specifies a date of filing 
for an earlier relevant application— 
(a) more than twelve months before the date of filing of the application in suit; or 
(b) where the comptroller has given permission for a late declaration to be made under 
section 5(2), more than fourteen months before the date of filing of the application in 
suit, 
he must report this finding to the comptroller,  and the comptroller must notify the applicant 
accordingly. 
(2) Where the comptroller has notified the applicant under paragraph (1), the applicant must, 
before the end of the period of two months beginning wi th the date of that notification, provide 
the comptroller with a corrected date; otherwise the comptroller must disregard the declaration in 
so far as it relates to the earlier relevant application. 
(3) In paragraph (2) “corrected date” means a date that would not have been reported by the 
examiner under paragraph (1). 
Formal requirements 
25.—(1) Subject to paragraphs (2) and (3), the requirements of the following provisions of these 
Rules are formal requirements— 
(a) rule 12(1) (application for a patent on Patents Form 1); 
(b) rule 14(1) (application in English or Welsh);  16(c) rule 14(2) and (3) (form of documents and drawings). 
(2) Where an application is delivered in electronic form or using electronic com munications, 
only the requirements of rule 14(1) are formal requirements. 
(3) Where an international application for a patent (UK) was filed in accordance with the 
provisions of the Patent Co-operation Treaty, the requirements mentioned in paragraph (1) shall 
be treated as complied with to the extent that the application complies with any corresponding 
provision of that Treaty. 
 
Publication of application 
Publication of application 
26.—(1) The period prescribed for the purposes of secti on 16(1) is eighteen months beginning 
with— 
(a) where there is no declared priority date, the date of filing of the application; or 
(b) where there is a declared priority date, that date. 
(2) Where a person’s application under rule 11(1)(a) or (b) has been accepted by the 
comptroller, the comptroller must ensure that th e application for the patent as published does not 
mention that person’s name and address as those of the person believed to be the inventor (or, as the case may be, that person’s address as that of the person so believed). 
 
Search and substantive examination 
Search under section 17 
27.—(1) A request under section 17(1)(c)(i) for a search must be made on Patents Form 9A. 
(2) The comptroller may, if he thinks fit, send to the applicant a copy of any document (or any 
part of it) referred to in the examiner’s report made under section 17. 
(3) Where an examiner conducts a search in relation to the first only of two or more 
inventions, in accordance with section 17(6), he must report this fact to the comptroller, and the 
comptroller must notify the applicant accordingly. 
(4) The applicant must pay any search fee in relation to  those inventions (other than the first) 
on or before the relevant date. 
(5) The relevant date is the first day of the th ree month period ending with the compliance date 
of the application. 
(6) The fee for a supplementary search under section 17(8), or a search under section 17(6), 
must be accompanied by Patents Form 9A. 
Request for substantive examination under section 18 
28.—(1) A request under section 18 for a substantive examination of an application must be 
made on Patents Form 10. 
(2) Subject to paragraphs (3) and (4) and rules 60 and 68(4), the period prescribed for the 
purposes of section 18(1) is six months beginning with  the date the application was published. 
(3) Where the comptroller has given directions und er section 22(1) or (2) in relation to 
information contained in the application, th e period prescribed for the purposes of section 18(1) 
is the relevant period. 
(4) Paragraphs (2) and (3) do not apply to a new application. 
(5) In relation to a new application, the peri od prescribed for the purposes of section 18(1) is— 
(a) two months beginning with its initiation date; or 
(b) if it expires later, the relevant period,  17and the reference in paragraph (7) to the date of filing of the application is a reference to the date 
of filing of the earlier application. 
(6) But where the new application is filed less than six  months before the compliance date, the 
period prescribed for the purposes of section 18(1) is the period ending with its initiation date. 
(7) For the purposes of this rule the relevan t period is two years beginning with— 
(a) where there is no declared priority date, the date of filing of the application; or 
(b) where there is a declared priority date, that date. 
Substantive examination reports 
29.—(1) Whenever the examiner reports to the comptroller under either section 18(3) or (4) on 
whether the application complies with the requi rements of the Act and these Rules, the 
comptroller must send a copy of that report to the applicant. 
(2) The comptroller may, if he thinks fit, send to the applicant a copy of any document (or any 
part of it) referred to in the examiner’s report. 
(3) For the purposes of rules 30 and 31— 
(a) “first substantive examination report” means the first report sent to the applicant under 
paragraph (1); and 
(b) “first observations report” means a report sent to the applicant under paragraph (1) 
which meets the condition in paragraph (4). 
(4) The condition is that— 
(a) a person has made observations to the comptroller under section 21(1) on the question 
whether the invention is a patentable invention; 
(b) the examiner has reported to the comptroller, as a consequence of those observations, 
that the invention does not comply with the requirements of the Act or these Rules; and 
(c) the comptroller has not previously sent to  the applicant a report, relating to those 
observations, under paragraph (1). 
Period for putting application in order 
30.—(1) The period prescribed for the purposes of sections 18(4) and 20(1) (failure of 
application) is the compliance period. 
(2) For the purposes of paragraph (1), subject to paragraphs (3) and (4), the compliance period 
is— 
(a) four years and six months beginning with— 
(i) where there is no declared priority date, the date of filing of the application, or 
(ii) where there is a declared priority date, that date; or 
(b) if it expires later, the period of twelve mont hs beginning with the date on which the first 
substantive examination report is sent to the applicant. 
(3) Subject to paragraph (4), where a new applica tion is filed the compliance period is— 
(a) where it is filed under section 8(3), 12(6) or 37(4)— 
(i) the period specified in paragraph (2) in rel ation to the earlier application, or 
(ii) if it expires later, the period of eighteen m onths beginning with the initiation date; and 
(b) where it is filed as mentioned in section 15(9), the period specified in paragraph (2) in 
relation to the earlier application. 
(4) Where the first observations report is sent to the applicant during the last three months of 
the period specified in paragraphs (2) or (3), the com pliance period is three months beginning 
with the date on which that report is sent.  18Amendment of application before grant 
31.—(1) A request to amend an application for a patent under section 19(1) must be made in 
writing. 
(2) The conditions prescribed under section 19(1) are as follows. 
(3) The applicant may amend his application only w ithin the period beginning with the date on 
which the applicant is informed of the examiner’s report under section 17(5) and ending with the date on which the comptroller sends him th e first substantive examination report. 
(4) But after the end of this period, the applicant may— 
(a) where the first substantive examination repor t states that his application complies with 
the requirements of the Act and these Rules, amend his application once before the end 
of the period of two months beginning with th e date on which that report was sent; or 
(b) where the first substantive examination report states that his application does not 
comply with the requirements of the Act and these Rules— 
(i) amend his application once at the same time as he makes his first observations on, or 
amendments to, his appli cation under section 18(3), and 
(ii) if the first substantive examination repor t is sent before preparations for the 
application’s publication have been complet ed by the Patent Office, amend his 
application prior to any further amendment he may make under sub-paragraph (b)(i). 
(5) However, the conditions in paragraphs (3) and (4) do not apply— 
(a) where the comptroller consents to the amendment; or 
(b) to an amendment of a request for the grant of a patent. 
(6) Where the comptroller’s consent is required, or the applicant wishes to amend the request 
for the grant of a patent, the applicant must include the reasons for the amendment. 
Reinstatement of applications under section 20A 
32.—(1) A request under section 20A for the reinstate ment of an application must be made 
before the end of the relevant period. 
(2) For this purpose the relevant period is— 
(a) two months beginning with the date on which the removal of the cause of non-
compliance occurred; or 
(b) if it expires earlier, the period of twelve mont hs beginning with the date on which the 
application was terminated. 
(3) The request must be made on Patents Form 14. 
(4) Where the comptroller is required to publish a notice under section 20A(5), it must be 
published in the journal. 
(5) The applicant must file evidence in support of that request. 
(6) Where that evidence does not accompany the request, the comptroller must specify a period 
within which the evidence must be filed. 
(7) Where, on consideration of that evidence, the comptroller is not satisfied that a case for an 
order under section 20A has been made out, he must notify the applicant accordingly. 
(8) The applicant may, before the end of the period of one month beginning with the date of 
that notification, request to be heard by the comptroller. 
(9) Where the applicant requests a hearing, the comptrolle r must give him an opportunity to be 
heard, after which the comptroller shall de termine whether the request under section 20A shall 
be allowed or refused. 
(10) Where the comptroller reinstates the application after a notice was published under 
paragraph (4), he must advertise in the journal the fact that he has reinstated the application.  19(11) In determining the date on which the removal of the cause of non-compliance occurred, 
the comptroller shall have regard to any relevant principles applicable under the European Patent 
Convention. 
Observations by third parties on patentability 
33.—(1) The comptroller must send to the applicant a copy of any observations on patentability 
he receives under section 21. 
(2) But paragraph (1) does not apply to any observation which, in the opinion of the 
comptroller, would— 
(a) disparage any person in a way likely to damage such person; or 
(b) be generally expected to encourage offensive, immoral or anti-social behaviour. 
(3) The comptroller may, if he thinks fit, send to the applicant a copy of any document referred 
to in the observations. 
(4) The comptroller must send to an examiner any observations on patentability. 
(5) But paragraph (4) does not apply where the observations are received after the examiner 
has reported under section 18(4) that an application complies with the requirements of the Act 
and these Rules. 
PART 3 
GRANTED PATENTS 
 
Certificate and amendment 
Certificate of grant 
34. The certificate of grant of a patent must be in a form which includes—  
(a) the name of the proprietor; 
(b) the date of filing of the application; and 
(c) the number of the patent. 
Amendment of specification after grant 
35.—(1) An application by the proprietor of a paten t for the specification of the patent to be 
amended must— 
(a) be made in writing; 
(b) identify the proposed amendment; and 
(c) state the reason for making the amendment. 
(2) The application must, if it is reasonably possi ble, be delivered to the comptroller in 
electronic form or using el ectronic communications. 
(3) The comptroller may, if he thinks fit, direct the proprietor to file a copy of the specification 
with the amendment applied for marked on it. 
(4) Where the specification of a European patent (UK) was published in a language other than 
English, the proprietor must file a translation into English of the part of the specification which 
he is applying to amend and a translation of the amendment. 
(5) The comptroller may, if he thinks fit, direct th e proprietor to file a translation into English 
of the specification as published.  20(6) Where the court or the comptroller allows th e proprietor of a patent to amend the 
specification of the patent, the comptroller may direct him to file an amended specification 
which complies with the requirements of Schedule 2. 
 
Renewal 
Renewal of patents: general 
36.—(1) In this rule and in rules 37 to 41— 
“renewal date” has the meaning given in rules 37(2) to (4) and 38(3); 
“renewal fee” means the fee prescribed in respect of a renewal date; “renewal period” means the period prescribed by rule 37 or 38 for the payment of a renewal 
fee. 
(2) If the renewal fee is not paid before the end of the renewal period, the patent shall cease to 
have effect at the end of the renewal date. 
(3) Patents Form 12 must be filed before the end of the renewal period. 
(4) But where payment is made under section 25(4) or section 28(3), Patents Form 12 must 
accompany the renewal fee and the prescribed additional fee. 
(5) On receipt of the renewal fee the comptroller must issue a certificate of payment. 
Renewal of patents: first renewal 
37.—(1) This rule prescribes the period for the payment of a renewal fee in respect of the first 
renewal date. 
(2) Subject to paragraphs (3) and (4)— 
(a) the first renewal date is  the fourth anniversary of the date of filing; and 
(b) the renewal period is three months ending with th e last day of the month in which that 
renewal date falls. 
(3) Where a patent is granted under the Act during th e period of three months ending with the 
fourth anniversary of the date of filing, or at  any time after that anniversary— 
(a) the first renewal date is the last day of the period of three months beginning with the 
date on which the patent was granted; and 
(b) the renewal period begins with the date on wh ich the patent was granted and ends with 
the last day of the month in which that renewal date falls. 
(4) Where the grant of a patent is mentioned in the European Patent Bulletin during the period 
of three months ending with the fourth anniversary of the date of filing, or at any time after that 
anniversary— 
(a) the first renewal date is the later of— 
(i) the last day of the period of three months begi nning with the date on which the grant 
of the patent was mentioned in the European Patent Bulletin (case A), or 
(ii) the next anniversary of the date of filing to fal l after the date on which the grant of the 
patent was so mentioned (case B); and 
(b) the renewal period is— 
(i) in case A, the period beginning with the date on which the grant of the patent was 
mentioned in the European Patent Bulletin and ending with the last day of the month in which the first renewal date falls, or 
(ii) in case B, three months ending with the last day of the month in which the first 
renewal date falls.  21Renewal of patents: subsequent renewals 
38.—(1) This rule prescribes the period for the payment of a renewal fee in respect of renewal 
dates subsequent to the first renewal date. 
(2) The renewal period is three months ending with th e last day of the month in which the 
renewal date falls. 
(3) For those purposes— 
(a) the second renewal date is the next anniversary of the date of filing to fall after the first 
renewal date; and 
(b) each subsequent renewal date is the anniversary of the previous renewal date. 
Renewal notice 
39.—(1) This rule applies where the renewal fee has not been received by the end of the renewal 
period. 
(2) The comptroller must, before the end of the peri od of six weeks beginning immediately 
after the end of the renewal period, and if the fee remains unpaid, send a renewal notice to the 
proprietor of the patent. 
(3) The comptroller must send the renewal notice to— 
(a) the address specified by the proprietor on payment  of the last renewal fee (or to another 
address that has since been notified to him for that purpose by the proprietor); or 
(b) where such an address has not been so specified or notified, the address for service 
entered in the register. 
(4) The renewal notice must remind the proprietor of the patent— 
(a) that payment is overdue; and 
(b) of the consequences of non-payment. 
Restoration of lapsed patents under section 28 
40.—(1) An application under section 28 for restoration of a patent may be made at any time 
before the end of the period ending with the thirteenth month after the month in which the period 
specified in section 25(4) ends. 
(2) The application must be made on Patents Form 16. 
(3) The notice of the application must be  published in the journal. 
(4) The applicant must file eviden ce in support of the application. 
(5) If that evidence does not accompany the appli cation, the comptroller must specify a period 
within which the evidence shall be filed. 
(6) If, on consideration of that evidence, the comptroller is not satisfied that a case for an order 
under section 28 has been made out, he must notify the applicant accordingly. 
(7) The applicant may, before the end of the period of one month beginning with the date of 
that notification, request to be heard by the comptroller. 
(8) If the applicant requests a hearing, the comptroller must give the applicant an opportunity 
to be heard before he determines whether to grant  or refuse the application under section 28. 
(9) Where the comptroller grants the application he must advertise the fact in the journal. 
Notification of lapsed patent 
41.—(1) This rule applies where— 
(a) a patent has ceased to have effect because a renewal fee has not been paid by the end of 
the renewal period; and  22(b) the renewal fee and the prescribed additional fee have not been paid by the end of the 
period specified in section 25 (4) (“the extended period”). 
(2) The comptroller must, before the end of the peri od of six weeks beginning immediately 
after the end of the extended period, send a no tice to the proprietor of the patent— 
(a) stating that the exte nded period has expired; and 
(b) referring him to the provisions of section 28. 
(3) The comptroller must send the notice to the address specified by rule 39(3). 
 
Surrender and cancelling entry that licences available as of right 
Surrender 
42. The notice of an offer by a proprietor to surrender a patent must be in writing and include— 
(a) a declaration that no action is pending before th e court for infringement or revocation of 
the patent; or 
(b) where such an action is pending, the particulars of the action. 
Application for, and cancellation of, an entry that licences are available as of right 
43.—(1) An application under section 46(1) must be made on Patents Form 28. 
(2) Where an entry is made in the register to the effect that licences under a patent are to be 
available as of right, the comptroller must ad vertise the entry in the journal. 
(3) An application under section 47(1) for the cancellation of an entry made under section 46 
must be made on Patents Form 30. 
(4) The period prescribed for the purposes of section 47(3) is two months beginning with the 
date on which the entry was made under section 46. 
PART 4 
THE REGISTER AND OTHER INFORMATION 
 
The register 
Entries in the register 
44.—(1) When an application for a patent is published, the comptroller must enter each of the 
following matters in the register— 
(a) the name of the applicant; 
(b) the name and address of the person identified as the inventor; 
(c) the address of the applicant and his address for service; 
(d) the title of the invention; 
(e) the date of filing of the application for a patent; 
(f) the application number; 
(g) where a declaration has been made for the purposes of section 5(2)— 
(i) the date of filing of each earlier relevant application specified in the declaration, 
(ii) its application number, and 
(iii) the country it was filed in or in respect of; and 
(h) the date of the application’s publication.  23(2) But where a person’s application under rule 11(1)(a) or (b) has been accepted by the 
comptroller, the comptroller may omit from the reg ister his name and address (or, as the case 
may be, his address) as that of the person believed to be the inventor. 
(3) Where an application for a patent has been published, the comptroller must enter each of 
the following matters in the register as soon as practi cable after the event to which they relate— 
(a) the date on which a request is made by an applicant for the substantive examination of 
his application; 
(b) the date on which an application is terminated or withdrawn. 
(4) When the patent is granted, the comptroller must enter each of the following matters in the 
register— 
(a) the date on which the comp troller granted the patent; 
(b) the name of the proprietor of the patent; 
(c) where the address of the proprietor or his address for service was not entered in the 
register under paragraph (1), that address or address for service. 
(5) In relation to a request for an opinion under section 74A, the comptroller must enter each 
of the following matters in the register as soon as practicable after the event to which they relate— 
(a) a notice that a request under section 74A(1)(a) or (b) has been received; 
(b) a notice that such a request has been refused or withdrawn; 
(c) a notice that an opinion has been issued. 
(6) A notice of any transaction, instrument or event mentioned in section 32(2)(b) or 33(3) 
must be entered in the register as soon as practi cable after it occurs (or, if later, when the 
application is published). 
(7) The comptroller may, at any time, enter in the register such other particulars as he thinks 
fit. 
Advertisement in relation to register 
45. The comptroller may publish or advertise such things done under the Act or these Rules in 
relation to the register as he thinks fit. 
Copies of entries in, or extracts from, the register and certified facts 
46.—(1) An application under section 32(6) for a certified copy of an entry in the register, or a 
certified extract from the register, must be made on Patents Form 23. 
(2) A person may apply on Patents Form 23 for an uncertified copy of an entry in the register 
or an uncertified extract from the register and, on payment of the prescribed fee, he shall be 
entitled to such a copy or extract. 
(3) A person may apply on Patents Form 23 for a certificate which certifies that— 
(a) an entry has or has not been made in the register; or 
(b) something which the comptroller is authorised to do has or has not been done. 
Registrations of transactions, instruments and events 
47.—(1) An application to register (or in the case of an application for a patent which has not 
been published, to give notice of) any transacti on, instrument or event mentioned in section 
32(2)(b) or 33(3) must— 
(a) be made on Patents Form 21; and 
(b) include evidence establishing the transaction, instrument or event. 
(2) The comptroller may direct that such evidence as he may require in connection with the 
application shall be sent to him within such period as he may specify.   24 
Copies of documents and correcti ons in relation to the register 
Copies of documents 
48.—(1) A person may apply to the comptroller for a certified copy of any relevant document 
and, on payment of the prescribed fee, he shall be entitled to such a copy. 
(2) A person may apply to the comptroller for an uncertified copy of any relevant document 
and, on payment of the prescribed fee, he shall be entitled to such a copy. 
(3) But a person is not entitled to a copy of a relevant document where— 
(a) it is not available for in spection under section 118; or 
(b) making or providing such a copy would infringe copyright. 
(4) For the purposes of this rule a relevant document is any of the following— 
(a) an application for a patent which has been published; 
(b) a specification of a patent; 
(c) any other document, or extract from any such document, kept at th e Patent Office. 
(5) An application under paragraph (1) or (2) must be made on Patents Form 23. 
Correction of name, address and address for service 
49.—(1) Any person may request that a correction be entered in the register or made to any 
application or other document filed at the Pat ent Office in respect of any of the following— 
(a) his name; 
(b) his address; 
(c) his address for service. 
(2) A request under paragraph (1)(a) to correct a name must be made on Patents Form 20. 
(3) Any other request under paragraph (1) must be made in writing. 
(4) If the comptroller has reasonable doubts about whether he should make the correction— 
(a) he must inform the person making the requ est of the reason for his doubts; and 
(b) he may require that person to file evidence in support of the request. 
(5) If the comptroller has no doubts (or no long er has doubts) about whether he should make 
the correction, he must enter the correction in the register or make it to the application or 
document. 
(6) For the purposes of this rule a request for a correction includes a correction made for the 
purposes of section 117. 
Request for correction of error 
50.—(1) Subject to rule 49, any person may request the correction of an error in the register or 
in any document filed at the Patent Office in connection with registration. 
(2) The request must be— 
(a) made in writing; and 
(b) accompanied by sufficient information to identify the nature of the error and the 
correction requested. 
(3) If the comptroller has reasonable doubts about whether there is an error— 
(a) he shall inform the person making the request of the reason for his doubts; and 
(b) he may require that person to furnish a written explanation of the nature of the error or 
evidence in support of the request.  25(4) If the comptroller has no doubts (or no l onger has doubts) about whether an error has been 
made he shall make such correction as he may agree with the proprietor of the patent (or, as the 
case may be, the applicant). 
 
Requests for information or documents 
Restrictions on inspection of documents  
51.—(1) For the purposes of section 118(1) the prescrib ed restrictions are those set out in 
paragraphs (2) and (3). 
(2) No document may be inspected— 
(a) where that document was prepared by the comptroller, an examiner or the Patent Office 
for internal use only; 
(b) where the circumstances specified in secti on 118(4) exist, before the end of the period 
of 14 days beginning with the date of the notification under rule 52(2); 
(c) where that document is a request or app lication made under section 118 or rule 46(2), 
48(2) or 54(1); or 
(d) where that document includes matter— 
(i) which in the comptroller’s opinion disparages any person in a way likely to damage 
him, or 
(ii) the inspection of which would in his opinion be generally expected to encourage 
offensive, immoral or ant i-social behaviour. 
(3) Unless in a particular case the comptroller otherwise directs, no document may be 
inspected— 
(a) where that document was filed at the Patent Office in connection with an application 
under section 40(1) or (2) or 41(8); 
(b) where that document is treated as a confidential document under rule 53; 
(c) where— 
(i) that document was prepared by the comptroller, an examiner or the Patent Office other 
than for internal use, and 
(ii) it contains information which the compt roller considers should remain confidential; 
(d) where that document relates to an intern ational application for a patent and the 
International Bureau would not be permitted to allow access to that document under the 
Patent Co-operation Treaty; or 
(e) where— 
(i) the comptroller has accepted a person’s application under rule 11(1)(a) or (b), and 
(ii) that person’s name and address can be identified from that document as those of the 
inventor or of the person believed to be the inventor (or, as the case may be, his 
address can be so identified). 
(4) In this rule references to a document include part of a document. 
Request for information where section 118(4) applies 
52.—(1) Where the circumstances specified in secti on 118(4) exist, a request under section 
118(1) must be accompanied by evidence verifying their existence. 
(2) The comptroller must notify the applican t for the patent of any request. 
(3) The notification must be accompanied by a copy of the request and the accompanying 
evidence.  26(4) The applicant may, before the end of the period of 14 days beginning with the date of the 
notification, inform the comptroller that th e circumstances specified in section 118(4) do not 
exist; otherwise the comptroller may treat him as accepting that those circumstances exist. 
Confidential documents 
53.—(1) Where a person files a document at the Patent Office or sends it to an examiner or the 
comptroller, any person may request that the docum ent be treated as a confidential document. 
(2) The comptroller must refuse any request where it relates to— 
(a) a Patents Form; or 
(b) any document filed in connection with a request under section 74A. 
(3) A request to treat a document as confidential must— 
(a) be made before the end of the period of 14 days beginning with the date on which the 
document was— 
(i) filed at the Patent Office, or 
(ii) received by the comptroller, an examiner or the Patent Office; and 
(b) include reasons for the request. 
(4) Where a request has been made under paragraph (1), the document must be treated as 
confidential until the comptroller refuses that request or gives a direction under paragraph (5). 
(5) If it appears to the comptroller that there is good reason for the document to remain 
confidential, he may direct that the docum ent shall be treated as a confidential document; 
otherwise he must refuse the request made under paragraph (1). 
(6) But where the comptroller believes there is no longer a good reason for the direction under 
paragraph (5) to continue in force, he must revoke it. 
(7) In this rule references to a document include part of a document. 
Requests for certain information 
54.—(1) Where a person requests to be notified of a relevant event, he must use Patents Form 
49. 
(2) Where a person has made such a request, the comptroller must notify him that the relevant 
event has occurred as soon as practicable after the event. 
(3) But the comptroller shall not give him inform ation or permit him to inspect a document 
unless he would be entitled to such information or to inspect such a document under section 118. 
(4) A request on Patents Form 49 must be for information regarding a single relevant event 
only. 
(5) For the purposes of paragraph (1), in relation to an application for a patent, each of the 
following is a relevant event— 
(a) an applicant requesting, or failing to request, a substantive examination before the end 
of the period prescribed for the purposes of section 18(1); 
(b) the application being published; 
(c) the notice of grant of the patent being published under section 24; 
(d) the application being t erminated or withdrawn. 
(6) For the purposes of paragraph (1), in relation to a patent, each of the following is a relevant 
event— 
(a) a request for an opinion under section 74A; 
(b) the patent ceasing to have effect by reason of section 25(3); 
(c) the renewal fee and any additional fee being paid during the period specified in section 
25(4);  27(d) an application being made for the restoration of the patent which has ceased to have 
effect. 
(7) For the purposes of paragraph (1), in relation to a patent or an application for a patent, each 
of the following is a relevant event— 
(a) an entry being made in the register; 
(b) a document becoming available for inspection under section 118 (by reason of a 
prescribed restriction no longer applying to the document); 
(c) an application to register a transaction, in strument or event being made under rule 47; 
(d) a matter being published in the journal. 
Bibliographic information about an  unpublished application 
55. For the purposes of section 118(3)(b) the following bibliographic information is 
prescribed— 
(a) the name of the applicant; 
(b) the title of the invention; 
(c) the number of the application; 
(d) the date of filing of the application; 
(e) where a declaration has been made for the purposes of section 5(2)— 
(i) the date of filing of each earlier relevant application specified in the declaration, 
(ii) its application number, and 
(iii) the country it was filed in or in respect of; 
(f) where an application has been terminat ed or withdrawn, that information; and 
(g) where a transaction, instrument or event mentioned in section 32(2)(b) or 33(3) is 
notified to the comptroller, that information. 
PART 5 
EUROPEAN PATENTS (UK) 
 
Translations 
Translations of European patents (UK) 
56.—(1) A translation into English of either— 
(a) the specification of the European patent (U K), which is filed under section 77(6); or 
(b) the claims of the specification of the application for a European patent (UK), which is 
filed under section 78(7), 
must be accompanied by Patents Form 54. 
(2) The translation must comply with the requiremen ts set out in Parts 1 to 3 of Schedule 2. 
(3) The translation and Patents Form 54 must be filed in duplicate. 
(4) But paragraph (2) does not apply where a translati on is delivered in electronic form or 
using electronic communications. 
(5) Where the specification includes any drawings a ll annotations in French or German must 
be replaced with annotations in English. 
(6) The period prescribed for the purposes of section 77 (6)(a) is three months beginning with 
the date on which the grant of the patent was mentioned in the European Patent Bulletin.  28(7) The period prescribed for the purposes of section 77(6)(b) is three months beginning with 
the date of publication, by the European Pat ent Office, of the specification as amended. 
(8) No translation may be filed under secti on 77(6)(a) or (b) before the beginning of the period 
prescribed for the purposes of that provision. 
(9) On a day appointed under section 77(9), section 77(6) and paragraphs (1)(a) and (5) to (8) 
of this rule shall cease to have effect. 
(10) The day appointed for the purpose of paragraph (9) shall be the day of the coming into 
force of the Agreement on the application of Article 65 of the Convention on the Grant of European Patents made in London on 17th October 2000( a). 
Corrected translations 
57.—(1) A corrected translation filed under section 80(3) must be accompanied by Patents Form 
54. 
(2) The corrected translation must comply with the requirements set out in Parts 1 to 3 of 
Schedule 2. 
(3) Where the corrected translation includes any draw ings all annotations in French or German 
must be replaced with annotations in English. 
(4) The corrected translation and Patents Form  54 must be filed in duplicate. 
(5) But paragraph (2) does not apply where a translati on is delivered in electronic form or 
using electronic communications. 
(6) The period prescribed for the purposes of section 80(3) for payment of the prescribed fee is 
14 days beginning with the day th e corrected translation is filed. 
 
Conversion requests 
Procedure for making a conversion request under section 81(2)(b)(i) 
58.—(1) A request under section 81(2)(b)(i) must be— 
(a) made in writing; and 
(b) accompanied by a copy of the notification by the European Patent Office that the 
application has been deemed to be withdrawn. 
(2) When making such a request, a person may also request the comptroller to send— 
(a) a copy of his application for a European patent (UK); and 
(b) a copy of the request, 
to the central industrial propert y office of any contracting state desi gnated in the application. 
(3) The period prescribed for the purposes of section 81(2)(b)(i) is three months beginning 
with the date of the notification mentioned in paragraph (1)(b). 
(4) Where a request has been made under section 81(2)(b)(i), the period prescribed for the 
purposes of sections 13(2), 15(10)(d) and 81(2)(c) is two months beginning with the date on which the comptroller received that request. 
(5) In paragraph (2) “contracting state” means a country which is a party to the European 
Patent Convention. 
Procedure for making a conversion request under section 81(2)(b)(ii) 
59.—(1) The period prescribed for the purposes of section 81(2)(b)(ii) is twenty months 
beginning with— 
                                                                                                                                                              
 
 
(a) Cm 5247.  29(a) where there is no declared priority date, the date of filing of the application; or 
(b) where there is a declared priority date, that date. 
(2) Where a request, transmitted under section 81(2)(b)(ii), has been received by the 
comptroller, he must notify the applicant accordingly. 
(3) Where a request has been transmitted under section 81(2)(b)(ii), the period prescribed for 
the purposes of sections 13(2), 15(10)(d) and 81(2)(c) is four months beginning with the date of that notification. 
Request for substantive examination following a direction under section 81 
60. Where an application for a European patent (UK) falls to be treated as an application for a 
patent under the Act by virtue of a directi on under section 81, the period prescribed for the 
purposes of section 18(1) is two years beginning with— 
(a) where there is no declared priority date, the date of filing of the application; or 
(b) where there is a declared priority date, that date. 
 
Obligations to other contracting partie s to the European Patent Convention 
Recognition of patent decision of competent authorities of other states 
61.—(1) Where in proceedings before the comptroller a person seeks recognition of a relevant 
determination, he must furnish to the comptroller a copy of the determination duly certified by the 
relevant official of the competent authority. 
(2) In paragraph (1) “relevant determination” means th e determination of a question to which 
section 82 applies by the competent authority of a relevant contracting state other than the United 
Kingdom. 
Procedure for obtaining evidence for proceedings under the European Patent Convention 
62.—(1) An application to the comptroller for an order under the Evidence (Proceedings in 
Other Jurisdictions) Act 1975( a) as applied by section 92(1) must be— 
(a) made in writing; 
(b) supported by written evidence; 
(c) accompanied by the request as a result of which the application is made, and where 
appropriate, a translation of th e request into English; and 
(d) accompanied by the prescribed fee. 
(2) The application must be made without notice. 
(3) The comptroller may permit an officer of the European Patent Office to attend the hearing 
and either— 
(a) examine the witnesses; or 
(b) request the comptroller to put specified questions to the witnesses. 
Communication of information to the European Patent Office 
63. The comptroller may authorise any information in the files of the Patent Office to be 
communicated to the European Patent Office or to a com petent authority of any country which is a 
party to the European Patent Convention, except where that information cannot  be communicated 
under section 118. 
                                                                                                                                                               
 
(a) 1975 c. 34.  30PART 6 
INTERNATIONAL APPLICATIONS 
 
Interpretation 
Interpretation relating to international applications 
64. In this Part the following have the same mean ing as they have in the Patent Co-operation 
Treaty— 
“competent receiving Office”; “International Preliminary Examination Report”; “International Preliminary Report on Patentability”; 
“International Search Report”; 
“International Searchi ng Authority”; 
“receiving Office”. 
 
Filing at the Patent Office 
Filing of international applica tions at the Patent Office 
65.—(1) An international application for a patent filed at the Patent Office as a competent 
receiving Office under the Patent Co-operation Treaty must be filed— 
(a) in English or Welsh; and 
(b) in triplicate. 
(2) Where fewer than three copies of the application are filed, the comptroller may direct the 
applicant to pay any copying costs. 
(3) Where the Patent Office was acting on behalf of the International Bureau as the receiving 
Office, the comptroller shall only transmit an international application for a patent filed at the 
Patent Office to the International Bureau and the International Searching Authority after the 
appropriate fee has been paid. 
(4) A request under the Treaty for a certified copy of an international application for a patent 
(including any corrections to that applicati on) filed at the Patent Office as the competent 
receiving Office must be filed on Patents Form 23. 
 
Beginning the national phase, international exhibitions and altered prescribed periods 
Beginning of national phase 
66.—(1) The prescribed period for the purposes of section 89A(3)(a) and (5)(a) is thirty one 
months beginning with— 
(a) where there is no declared priority date, the date of filing of the application; 
(b) where there is a declared priority date, that date. 
(2) But where the applicant has been notifie d under rule 69(5), the period prescribed for the 
purposes of section 89A(3)(a) and (5)(a) is three m onths beginning with the date of the 
notification. 
(3) Where an international application for a pat ent (UK) has begun the national phase, a 
request for permission to make a late declaration may be made under section 5(2B) before the 
end of the period of one month beginning with the date the national phase of the application 
begins.  31International exhibitions 
67.—(1) Paragraph (2) applies where an applicant, on filing an international application for a 
patent (UK), states in writing to the receiving offi ce that the invention has been displayed at an 
international exhibition. 
(2) The prescribed period for the purposes of section 2(4)(c) is two months beginning with the 
date on which the national phase begins. 
Altered prescribed periods 
68.—(1) This rule applies to an international applica tion for a patent (UK) which has begun the 
national phase of the application. 
(2) The period prescribed for the purposes of section 13(2) is— 
(a) the period prescribed by rule 10(3); or 
(b) if it expires later, the period of two mont hs beginning with the date on which the 
national phase begins. 
(3) The period prescribed for the purposes of sections 15(10)(c) and (d) and 17(1) is— 
(a) the period prescribed by rule 22(2) and (7); or 
(b) if it expires later, the period of two mont hs beginning with the date on which the 
national phase begins. 
(4) The period prescribed for the purposes of section 18(1) is— 
(a) thirty three months beginning with— 
(i) where there is no declared priority date, the date of filing of the application; or 
(ii) where there is a declared priority date, that date; or 
(b) if it expires later, the period of two mont hs beginning with the date on which the 
national phase begins. 
 
Translations 
Necessary translations under section 89A(3) and (5) 
69.—(1) A translation is necessary for the purposes of section 89A(3) where any of the 
following are not in English— 
(a) the international application for a patent (UK) as published in accordance with the 
Patent Co-operation Treaty; 
(b) where the information mentioned in paragraph 3(2)(a) and (b) of Schedule 1 (biological 
material) has been provided, that information. 
(2) Where the applicant expressly requests the comptroller to proceed with the national phase 
before the end of the period prescribed by rule 66(1), the translation must include the request and 
abstract. 
(3) But paragraph (2) does not apply where a copy of the application, as published in 
accordance with the Patent Co-operation Treaty, is available to the comptroller. 
(4) A translation of an amendment is necessary for the purposes of section 89A(5) where any 
amendment made to the application is not in English and has either been— 
(a) published under the Patent Co-operation Treaty; or 
(b) annexed to the International Preliminary Examination Report. 
(5) At the end of the period prescribed by rule 66(1), the comptroller must notify the applicant 
that a necessary translation is missing if— 
(a) a translation of the application has been file d, but a translation of the amendment has 
not been filed; or  32(b) the information mentioned in paragraph 3(2)(a) and (b) of Schedule 1 (biological 
material) has been provided, but a translation of that information has not been filed, 
and the prescribed fee has been paid. 
Requirements of necessary translations 
70.—(1) This rule applies to translations which are necessary for the purposes of section 89A(3) 
and (5). 
(2) Such a translation is necessary for only that part of the application which is in a language 
other than English. 
(3) Where the application includes a drawing which is annotated, the translation shall include 
either— 
(a) a copy of the original drawing where the original annotations have been replaced by 
annotations in English; or 
(b) a new drawing with the annotations in English. 
(4) Where a title has been established for the application by the International Searching 
Authority, the translation must include that title (a nd not any title which was included in the 
application as it was originally filed). 
(5) Where— 
(a) the description of the inventi on includes a sequence listing; and 
(b) the listing complies with the relevant requi rements of the Patent Co-operation Treaty, 
the translation of the application may exclude a translation of the sequence listing. 
(6) This rule applies to translations of amendments  as it applies to translations of applications 
and accordingly references to “application” sha ll be construed as references to “amendment”. 
 
Application deemed withdrawn or filing date refused under the Patent Co-operation Treaty 
Directions under section 89(3) and (5) 
71.—(1) The applicant may, before the end of the relevant period, make a written request to the 
comptroller to give a direction under section 89(5). 
(2) The applicant may notify the comptroller that the circumstances mentioned in section 89(3) 
or rule 72 apply to his application. 
(3) The request under paragraph (1) must be accompanied by— 
(a) a statement of the reasons for the request; and 
(b) the fee prescribed for the purposes of section 89A(3). 
(4) The relevant period is two months begi nning with the date on which— 
(a) the International Bureau; or 
(b) the receiving Office, 
notifies the applicant that his intern ational application for a paten t (UK) is refused a filing date 
under the Patent Co-operation Treaty. 
(5) Where the applicant has made a request to the comptroller under paragraph (1), the 
comptroller may direct the applicant to furnish hi m with any document, information or evidence 
within such period as the comptroller may specify. 
(6) Where the applicant fails, before the end of the period specifi ed, to comply with a direction 
given under paragraph (5), the comptroller may tr eat him as having withdrawn his request. 
(7) Where section 89(3) applies or a direction has been given under section 89(5) the 
comptroller may—  33(a) alter any period of time (whether it has already  expired or not) specified in the Act or 
listed in Parts 1 to 3 of Schedule 4; and 
(b) amend any document kept at the Patent Office in relation to the application, 
subject to such conditions as the comptroller may direct. 
Circumstance prescribed for the purposes of section 89(3) 
72. The other circumstance prescribed for the purposes of section 89(3) is where the comptroller 
determines that, in comparable circumstances in rel ation to an application under the Act (other 
than an international application for a patent (UK)), he would have exercised his powers under 
rule 107 or 108 to prevent the appli cation being treated as withdrawn. 
PART 7 
PROCEEDINGS HEARD BEFORE THE COMPTROLLER 
 
Introductory 
Scope and interpretation 
73.—(1) This Part applies to the following proceedings heard before the comptroller— 
(a) applications, references and requests under the provis ions mentioned in Part 1 of 
Schedule 3; 
(b) oppositions under the provisions mentioned in Part 2 of that Schedule. 
(2) The rules listed in Part 4 of that Schedule apply to any proceedings heard before the 
comptroller under the Act. 
(3) In this Part— 
“claimant” means a person who starts proceedings or is treated as starting proceedings under 
rule 76(1); 
“defendant” means a person who files a count er-statement under rule 77(6) or (8); 
“statement of case” means the statement of grounds or the counter-statement and references to 
a statement of case include part of the statement of case; 
“statement of grounds” means a statement filed by the claimant; 
“statement of truth” means a statement that the person making the statement believes that the 
facts stated in a particular document are true; and 
“witness statement” means a written statement signed by  a person that contains the evidence 
which that person would be allowed to give orally. 
Overriding objective 
74.—(1) The rules in this Part set out a procedural code with the overriding objective of 
enabling the comptroller to deal with cases justly. 
(2) Dealing with a case justly includes, so far as is practicable— 
(a) ensuring that the parties are on an equal footing; 
(b) saving expense; 
(c) dealing with the case in ways which are proportionate— 
(i) to the amount of money involved, 
(ii) to the importance of the case, 
(iii) to the complexity of the issues, and  34(iv) to the financial position of each party; 
(d) ensuring that it is dealt with expeditiously and fairly; and 
(e) allotting to it an appropriate share of the resources available to the comptroller, while 
taking into account the need to allot resources to other cases. 
(3) The comptroller shall seek to give effect to the overriding objective when he— 
(a) exercises any power given to him by this Part; or 
(b) interprets any rule in this Part. 
(4) The parties are required to help the comptroller to further the overriding objective. 
Publication of notices 
75. The comptroller must advertise in the journal any event to which it is possible to object 
under any of the provisions mentioned in Part 2 or 3 of Schedule 3, subject to rule 105(5). 
 
Conduct of hearings 
Starting proceedings 
76.—(1) Proceedings are started when a person files in duplicate— 
(a) the relevant form; and 
(b) his statement of grounds. 
(2) Any person may give notice of opposition— 
(a) in the case of section 75(2), before the end of the period of two weeks beginning with 
the date of the relevant notice; and 
(b) in the case of any of the other provisions mentioned in Part 2 of Schedule 3, before the 
end of the period of four weeks beginning with  the date of the relevant notice. 
(3) For the purposes of this rule and rule 77— 
“relevant form” means— 
(a) in relation to applications or requests under the provisions of the Medicinal Products 
Regulation or the Plant Protec tion Products Regulation men tioned in Part 1 of Schedule 
3, Patents Form SP3; 
(b) in relation to applications, references or req uests under any other provision mentioned 
in Part 1 of that Schedule, Patents Form 2; and 
(c) in relation to oppositions under the provisions mentioned in Part 2 of that Schedule, 
Patents Form 15; and 
“relevant notice” means the advertisement in the journal mentioned in rule 75. 
(4) A statement of grounds must— 
(a) include a concise statement  of the facts and grounds on which the claimant relies; 
(b) in the case of rule 89(5), include the gro unds of objection to the draft licence; 
(c) where appropriate, include the period or terms of the licence which he believes are 
reasonable; 
(d) specify the remedy which he seeks; 
(e) where it accompanies an application under the Compulsory Licensing Regulation( a), 
include any information requi red by that Regulation; 
(f) be verified by a stat ement of truth; and 
(g) comply with the requirements of Part 1 of Schedule 2. 
                                                                                                                                                               
 
(a) OJ No L 157, 9.6.2006, p1.  35Notification of the parties 
77.—(1) The comptroller must notify the applicant for, or proprietor of, the patent which is the 
subject matter of the case that proceedings have started. 
(2) In addition, the comptroller may notify any persons who appear to him to be likely to have 
an interest in the case that proceedings have started. 
(3) But where a person mentioned in paragraph (1) or (2)— 
(a) is the claimant; or 
(b) has indicated in writing to the comptro ller that he supports the claimant’s case, 
the comptroller has no duty to notify him. 
(4) The comptroller must send the relevant form and the statement of grounds with the 
notification under paragraph (1) or (2). 
(5) In that notification, the comptroller must specify a period within which the persons notified 
may file a counter-statement. 
(6) Any counter-statement must be filed in duplicate before the end of the period specified 
under paragraph (5). 
(7) But paragraphs (5) and (6) do not apply to an opposition under any of the provisions 
mentioned in Part 3 of Schedule 3. 
(8) In such oppositions, any counter-statement must be filed in duplicate before the end of the 
period of four weeks beginning with the date of the relevant notice. 
(9) Where— 
(a) a person was notified under paragraph (1) or (2); and 
(b) that person fails to file a counter-statement under paragraph (6) or (8), 
the comptroller shall treat him as supporting the claimant’s case. 
(10) The period prescribed for the purposes of giving notice to the comptroller under section 
47(6) of opposition to cancellation of an entry made under section 46 that licences are available 
as of right is the period prescribed by paragraph (8). 
The counter-statement 
78.—(1) Any counter-statement file d by the defendant must— 
(a) state which of the allegations in  the statement of grounds he denies; 
(b) state which of the allegations he is unable to admit or deny, but which he requires the 
claimant to prove; 
(c) state which of the allegations he admits; 
(d) be verified by a stat ement of truth; and 
(e) comply with the requirements of Part 1 of Schedule 2. 
(2) Where the defendant denies an allegation— 
(a) he must state hi s reasons for doing so; and 
(b) if he intends to put forward a different ve rsion of events from that given by the 
claimant, he must st ate his own version. 
(3) A defendant who fails to deal with an allegation in a counter-statement shall be taken to 
admit that allegation. 
(4) But a defendant who— 
(a) fails to deal with an allegation; but 
(b) has set out in his counter-statement the natu re of his case in relation to the issue to 
which the allegation is relevant, 
shall be taken to require the allegation to be proved.  36Copies of documents 
79.—(1) Where a relevant statement refers to any ot her document, a copy of that document must 
accompany the relevant statement. 
(2) Where more than one copy of a relevant statement is filed, each copy of the statement must 
be accompanied by a copy of any document referred to in the statement. 
(3) But paragraphs (1) and (2) do not apply where— 
(a) the relevant statement is sent to the comptroller; and 
(b) the document referred to in the relevant stateme nt was published by the comptroller or 
is kept at the Patent Office. 
(4) In this rule “relevant statement” means a witness statement, statement of case, affidavit or 
statutory declaration. 
Evidence rounds and the hearing 
80.—(1) When the defendant files a counter-statem ent, the comptroller must as soon as 
practicable— 
(a) send the counter-statement to the claimant; and 
(b) specify the periods within which evidence may be filed by the claimant and the 
defendant. 
(2) The comptroller may, at any time he thinks fit,  give leave to either party to file evidence 
upon such terms as he thinks fit. 
(3) Under this rule, evidence shall only be considered to be filed when— 
(a) it has been received by the comptroller; and 
(b) it has been sent to all the other parties to the proceedings. 
(4) The comptroller must then give the parties an opportunity to be heard. 
(5) If any party requests to be heard, the comptroller must send to the parties notice of a date 
for the hearing. 
(6) When the comptroller has decided the matter he must notify all the parties of his decision, 
including his reasons for making the decision. 
Alteration of time limits 
81.—(1) The comptroller may extend or shorten (or further extend or shorten) any period of 
time which has been specified under any provision of this Part. 
(2) An extension may be granted under paragraph (1) notwithstanding the period of time 
specified has expired. 
General powers of the comptroller in relation to proceedings before him 
82.—(1) Except where the Act or these Rules otherwise provide, the comptroller may give such 
directions as to the management of the proceedings as he thinks fit, and in particular he may— 
(a) require a document, information or evidence to be filed; 
(b) require a translation of a speci fication of a patent or application or any other document 
which is not in English; 
(c) require a party or a party’s legal representative to attend a hearing; 
(d) hold a hearing and receive evidence by telephone or by using any other method of 
direct oral com munication; 
(e) allow a statement of case to be amended; 
(f) stay the whole, or any part, of the proceedings either generally or until a specified date 
or event;  37(g) consolidate proceedings; 
(h) direct that part of any proceedings be dealt with as separate proceedings; and 
(i) direct that the parties attend a case management conference or pre-hearing review. 
(2) The comptroller may control the ev idence by giving directions as to— 
(a) the issues on which he requires evidence; 
(b) the nature of the evidence which he requires to decide those issues; and 
(c) the way in which the evidence is to be placed before him, 
and the comptroller may use his power under this paragraph to exclude evidence which would 
otherwise be admissible. 
(3) When the comptroller gives directions under any provision of this Part, he may— 
(a) make them subject to conditions; and 
(b) specify the consequence of failure to comply with the directions or a condition. 
Striking out a statement of case and summary judgment 
83.—(1) A party may apply to the comptroller for him to  strike out a statem ent of case or to give 
summary judgment. 
(2) If it appears to the comptroller that— 
(a) the statement of case discloses no reasonable grounds for bringing or defending the 
claim; 
(b) the statement of case is an abuse of process or is otherwise likely to obstruct the just 
disposal of the proceedings; or 
(c) there has been a failure to comply with a sec tion, a rule or a previous direction given by 
the comptroller, 
he may strike out the statement of case. 
(3) The comptroller may give summary judgment  against a claimant or defendant on the whole 
of a case or on a particular issue if— 
(a) he considers that— 
(i) that claimant has no real prospect of succeeding on the case or issue, or 
(ii) that defendant has no real prospect of successfully defending the case or issue; and 
(b) there is no other compelling reason why the case or issue should be disposed of at a 
hearing. 
Hearings in public 
84.—(1) Subject to paragraphs (3) and (4), any hearing before the comptroller in proceedings 
relating to an application for a patent,  or a patent, shall be held in public. 
(2) Any party to the proceedings may apply to the comptroller for a hearing to be held in 
private. 
(3) The comptroller may grant an application under paragraph (2) where— 
(a) he considers there is good reason for the hearing to be held in private; and 
(b) all the parties to the proceedings have had an opportunity to be heard on the matter, 
and where the application is granted th e hearing must be held in private. 
(4) Any hearing— 
(a) of an application under paragraph (2); or 
(b) relating to an application for a patent which has not been published, 
shall be held in private.  38(5) For the purposes of this rule a reference to a hearing includes any part of a hearing. 
 
Miscellaneous 
Security for costs or expenses 
85.—(1) The conditions prescribed for the purposes of making an order for security for costs 
under section 107(4) are that the party against whom the order is made— 
(a) is resident outside the United Kingdom, but not resident in— 
(i) a Brussels Contracting State, 
(ii) a Lugano Contracting State, or 
(iii) a Regulation State, 
as defined in section 1(3) of the Civil Jurisdiction and Judgments Act 1982( a); 
(b) is a company or other body (whether incorporated inside or outside the United 
Kingdom) and there is reason to believe that it will be unable to pay another party’s 
costs if ordered to do so; 
(c) has changed his address for service with a view to evading the consequences of the 
litigation; 
(d) has furnished an incorrect address for service; or 
(e) has taken steps in relation to his assets that w ould make it difficult to enforce an order 
for costs against him. 
(2) In relation to proceedings in Scotland, references in this rule to costs are references to 
expenses. 
Powers of comptroller to compel attendance of witnesses and production of documents 
86. The comptroller shall have the powers of a j udge of the High Court (in Scotland, the Court 
of Session) as regards— 
(a) the attendance of witnesses; and 
(b) the discovery and production of documents, 
but he shall have no power to punish summarily for contempt. 
Evidence in proceedings before the comptroller 
87.—(1) Subject to paragraphs (2) to (5), evidence filed under this Part may be given— 
(a) by witness statement, statement of case, affi davit, statutory declaration; or 
(b) in any other form which would be admissible as evidence in proceedings before the 
court. 
(2) A witness statement or a statement of case may only be given in evidence if it includes a 
statement of truth. 
(3) Evidence is to be by witness statement unless the comptroller directs or any enactment 
requires otherwise. 
(4) A witness statement, affidavit or statutory declaration must comply with the requirements 
of Part 1 of Schedule 2, unless th e comptroller otherwise directs. 
(5) For the purposes of this Part a statement of truth must be dated and signed by— 
(a) in the case of a witness statement, the person making the statement; and 
                                                                                                                                                               
 
(a) 1982 c. 27; section 1(3) was substituted by SI 1990/2591, and then amended by section 2(5) and (6) of the Civil Jurisdiction 
and Judgments Act 1991 (c. 12) and by SI 2000/1824 and 2001/3929.  39(b) in any other case, the party or his legal representative. 
Proceedings in Scotland 
88.—(1) Where there is more than one party to proceedings, a party to the proceedings may 
apply to the comptroller to hold proceedings in Scotland. 
(2) An application made under paragraph (1) must be granted— 
(a) where all the parties consent to the proceedings being held in Scotland; or 
(b) where the comptroller considers it appropriate. 
(3) A refusal of an application made under paragraph  (1) is excepted from the right of appeal 
conferred by section 97. 
Proceedings started under section 46(3) by a person other than the proprietor 
89.—(1) An application by a person other than the proprietor to the comptroller under section 
46(3)(a) or (b) must be— 
(a) made on Patents Form 2; and 
(b) accompanied by two copies of the draft of the licence he proposes should be granted. 
(2) The comptroller must notify the proprietor of th e patent that an application has been made. 
(3) The comptroller must send a copy of the draft licence with the notification. 
(4) In the notification, the comptroller must speci fy a period within which the proprietor may 
file a statement of grounds. 
(5) The proprietor must file a statement of grounds in accordance with rule 76(4); otherwise he 
shall be treated as supporting the applicant’s case. 
(6) Proceedings shall continue under this Part as if they had been started under rule 76(1) and 
for those purposes the proprietor shall be “the cl aimant” and the applicant shall be “the 
defendant”. 
Licences following entitlement proceedings 
90.—(1) The period prescribed for the purposes of section 11(3) and (3A) shall be two months 
beginning with— 
(a) where section 11 is applied by section 12(5), the date on which the order under section 
12(1) was made; and 
(b) in any other case, the date on which the order under section 8 was made. 
(2) The period prescribed for the purposes of section 38(3)  shall be two months beginning with 
the date on which the order mentioned in section 38(2) was made. 
Period prescribed for applications by employee for compensation 
91.—(1) The period prescribed for the purposes of section 40(1) and (2) shall be the period 
beginning with the date of grant of the patent and ending one year after the patent ceased to have 
effect. 
(2) But if an application for restora tion is made under section 28 and— 
(a) the application is granted, the period prescri bed under paragraph (1) shall continue as if 
the patent had remained continuously in effect; or 
(b) the application is refused, the period prescribed for the purposes of section 40(1) and 
(2) shall be— 
(i) the period prescribed under paragraph (1), or 
(ii) if it expires later, the period of six m onths beginning with the date on which the 
application was refused.  40PART 8 
OPINIONS 
 
Interpretation 
Interpretation 
92. In this Part— 
“request” means, unless the context otherwise requires, a request for an opinion under section 
74A( a); 
“requester” means the person who makes that request; “patent in suit” means the pa tent to which that request relates; 
“patent holder” means the proprietor of that patent and any exclusive licensee of the patent; 
and 
“relevant proceedings” means proceedings (whether pending or concluded) before the 
comptroller, the court or the European Patent Office. 
 
Request for opinion 
Request for an opinion under section 74A 
93.—(1) A request must be made on Patents Form 17 and must be accompanied by a copy and a 
statement setting out fully— 
(a) the question upon which an opinion is sought; 
(b) the requester’s submissions on that question; and 
(c) any matters of fact which are requested to be taken into account. 
(2) The statement must be accompanied by— 
(a) the name and address of any persons, of whom the requester is aware, having an interest 
in that question; and 
(b) particulars of any relevant proceedings of which the requester is aware which relate to 
the patent in suit and which may be relevant to that question. 
(3) However, where the requester is acting as an agent in making the request, the persons 
referred to in paragraph (2)(a) do not include the person for whom the requester is so acting. 
(4) The statement shall be accompanied by a copy of any evidence or other document (except a 
document which has been published by the comptroller or is kept at the Patent Office) which is 
referred to in the statement. 
(5) Each such statement, evidence or other document must be provided in duplicate. 
Refusal or withdrawal of request 
94.—(1) The comptroller shall not issue an opinion if— 
(a) the request appears to him to be frivolous or vexatious; or 
(b) the question upon which the opinion is sought  appears to him to have been sufficiently 
considered in any relevant proceedings. 
(2) The comptroller shall not issue an opinion if th e requester gives him notice in writing that 
the request is withdrawn. 
(3) If the comptroller intends at any time— 
                                                                                                                                                               
 
(a) 1977 c.37; section 74A was inserted by the Patents Act 2004 (c.16), section 13.  41(a) to refuse the request because the condition in paragraph (1)(a) or (b) is satisfied; or 
(b) to refuse the request because, in accordance with section 74A(3)(b), he considers it 
inappropriate in all the circu mstances to issue an opinion, 
he shall notify the requester accordingly. 
Notification and advertisement of request 
95.—(1) The comptroller must notify each of the following persons of the request (except where 
the person concerned is the requester)— 
(a) the patent holder; 
(b) any holder of a licence or sub-licence under the patent in suit which has been registered 
under rule 47; 
(c) any person who has made a request in respect of the patent in suit under rule 54 
regarding an opinion being requested under rule 93; 
(d) any person who is specified under rule 93(2)(a). 
(2) In addition, the comptroller may notify of the request any persons who appear to him to be 
likely to have an interest in the question upon which the opinion is sought. 
(3) The comptroller must send a copy of the form and statement filed under rule 93(1) to each 
person so notified, together with a copy of such other documents filed under rule 93 as he thinks 
fit. 
(4) The comptroller must advertise a request in such manner as he thinks fit. 
(5) However, if the request is refused or wit hdrawn before a notification has been made under 
paragraph (1)— 
(a) the patent holder alone must be notified of the request (and of the fact that it has been 
refused or withdrawn); and 
(b) paragraphs (3) and (4) do not apply. 
Submission of observations and observations in reply 
96.—(1) If the request has not been refused or withdrawn, any person may, before the end of the 
relevant period, file observations on any issue raised by the request. 
(2) Such observations may include reasons why the comptroller should refuse the request. 
(3) Any person who files observations under paragraph (1) must ensure that, before the end of 
the relevant period, a copy of those observations is received— 
(a) where that person is not the paten t holder, by the patent holder; and 
(b) by the requester. 
(4) A person to whom observations are sent under paragraph (3) may, during the period of two 
weeks beginning immediately after the end of the relevant period, file observations confined 
strictly to matters in reply. 
(5) Any person who files observations under paragraph (4) must ensure that, within that period 
of two weeks, a copy of those observations is received— 
(a) where that person is the requester, by the patent holder; and 
(b) where that person is the patent holder, by the requester. 
(6) If it is reasonably possible, the observations filed under this rule and the copies of such 
observations shall be delivered only in electroni c form or using elect ronic communications. 
(7) For the purposes of this rule, the relevant period is four weeks beginning with the date of 
advertisement under rule 95(4).  42Issue of the opinion 
97.—(1) After the end of the procedure under rule 96, the comptroller must refer the request to 
an examiner for the preparation of the opinion. 
(2) The comptroller must issue the opinion that  has been prepared by sending a copy to— 
(a) the requester; 
(b) the patent holder; and 
(c) any other person who filed observations under rule 96(1). 
 
Review of opinion 
Review of opinion 
98.—(1) The patent holder may, before the end of the period of three months beginning with the 
date on which the opinion is issued, apply to the comptroller for a review of the opinion. 
(2) However, such proceedings for a review may not be brought (or if brought may not be 
continued) if the issue raised by the review has been decided in other relevant proceedings. 
(3) The application must be made on Patents Form 2 and be accompanied by a copy and a 
statement in duplicate setting out the grounds on which the review is sought. 
(4) The statement must contain particulars of any relevant proceedings of which the applicant 
is aware which may be relevant to the question whether the proceedings for a review may be 
brought or continued. 
(5) The application may be made on the following grounds only— 
(a) that the opinion wrongly concluded th at the patent in suit was invalid, or was invalid to 
a limited extent; or 
(b) that, by reason of its interpretation of the specifi cation of the patent in suit, the opinion 
wrongly concluded that a particular act did not or would not constitute an infringement 
of the patent. 
Procedure on review 
99.—(1) On receipt of the application, the comptroller must send a copy of the form and 
statement filed under rule 98 to— 
(a) the requester (if different from the applicant); and 
(b) any person who filed observations under rule 96. 
(2) The comptroller must advertise the applicati on in such manner as he thinks fit. 
(3) Before the end of the relevant period, any person may file a statement in support of the 
application or a counter-statement contesting it (which in either case must be in duplicate), and 
on so doing shall become a party to the proceedings for a review. 
(4) For the purposes of paragraph (3) the relevant period is— 
(a) four weeks beginning with the date on whi ch the application is advertised under 
paragraph (2); or 
(b) if it expires later, the period of two mont hs beginning with the date on which the 
opinion is issued under rule 97(2). 
(5) The comptroller shall send to the other parties a copy of each statement or counter-
statement filed under paragraph (3). 
(6) The rules listed in Parts 4 and 5 of Schedule 3 shall apply to the proceedings for a review 
and for the purposes of rule 83(3)— 
(a) a reference to “the claimant” is a reference to the applicant for a review; and 
(b) a reference to “the defendant” is a reference to any other party.  43Outcome of review 
100.—(1) On completion of the proceedings under rule 99 the comptroller shall either— 
(a) set aside the opinion in whole or in part; or 
(b) decide that no reason has been shown for the opinion to be set aside. 
(2) A decision under paragraph (1)(a) or (b) shall not estop any party to any proceedings from 
raising any issue regarding the validity or the infringement of the patent. 
(3) No appeal under section 97 shall lie from a decision to set asi de the opinion under 
paragraph (1)(a), except where the appeal relates to a part  of the opinion that is not set aside. 
PART 9 
MISCELLANEOUS 
 
Agents and advisers 
Agents 
101.—(1) Any act required or authorised by the Act or these Rules to be done by or to any 
person in connection with an application for a patent,  or any procedure relating to a patent, may be 
done by or to an agent authorised by that person orally or in writing— 
(a) where an agent is appointed when a person starts or joins any proceeding under the Act, 
once the comptroller has been notified of his appointment in writing; or 
(b) where an agent is appointed after a person has started or joined any proceeding under 
the Act, once Patents Form 51 has been filed in duplicate. 
(2) Where an agent has been authorised under paragraph (1), the comptroller may, in any 
particular case, require the signature or presence of his principal. 
Appointing advisers 
102. The comptroller may appoint an adviser to assist him in any proceeding before him and 
shall settle any question or instructions to be given to the adviser. 
 
Address for service 
Address for service 
103.—(1) For the purposes of any proceeding under the Act or these Rules, an address for 
service must be furnished by— 
(a) an applicant for the grant of a patent; 
(b) a person who makes any other application, reference or request or gives any notice of 
opposition under the Act; and 
(c) any person opposing such an application, reference, request or notice. 
(2) The proprietor of a patent, or any person who has registered any right in or under a patent 
or application, may furnish an address for service by notifying the comptroller. 
(3) Where a person has furnished an address for service under paragraph (1) or (2), he may 
substitute a new address for service by notifying the comptroller. 
(4) An address for service furnished under paragraph (1)(a) or (2) must be an address in the 
United Kingdom, another EEA State or the Channel Islands. 
(5) An address for service furnished under paragraph (1)(b) or (c) must be an address in the 
United Kingdom, unless in a particular case the comptroller otherwise directs.  44Failure to furnish an address for service 
104.—(1) Where— 
(a) a person has failed to furnish an address for service under rule 103(1); and 
(b) the comptroller has sufficient informati on enabling him to contact that person, 
the comptroller shall direct that person to furnish an address for service. 
(2) Where a direction has been given under paragraph (1), the person directed shall, before the 
end of the period of two months beginning with the date of the direction, furnish an address for 
service. 
(3) Paragraph (4) applies where— 
(a) a direction was given under paragraph (1) and the period prescribed by paragraph (2) 
has expired; or 
(b) the comptroller had insufficient informa tion to give a direction under paragraph (1), 
and the person has failed to furnish an address for service. 
(4) Where this paragraph applies— 
(a) in the case of an applicant for the grant of a patent, the application shall be treated as 
withdrawn; 
(b) in the case of a person mentioned in rul e 103(1)(b), his application, reference, request 
or notice of opposition shall be treated as withdrawn; and 
(c) in the case of a person mentioned in rule 103(1)(c), he shall be deemed to have 
withdrawn from the proceedings. 
(5) In this rule an “address for service” means an address which complies with the 
requirements of rule 103(4) or (5). 
 
Corrections and remission of fees 
Correction of errors 
105.—(1) A request to the comptroller to correct an error or mistake under section 117 must be 
made in writing and identify the proposed correction. 
(2) The comptroller may, if he thinks fit, require the person requesting a correction to produce 
a copy of the document indicating the correction. 
(3) Where the request is to correct a specificati on of a patent or application, the request shall 
not be granted unless the correction is obvious (meaning that it is immediately evident that 
nothing else could have been intended in  the original specification).  
(4) But paragraph (3) does not apply where the error in the specification of the patent or 
application is connected to the delivery of the applicati on in electronic form or using electronic 
communications. 
(5) Where the comptroller determines that no person could reasonably object to the correction 
no advertisement shall be published under rule 75. 
(6) Where the comptroller is required to publish a notice under section 117(3), it must be 
published in the journal. 
(7) This rule does not apply to a correction of a name, address or address for service (which 
may be corrected under rule 49). 
Remission of fees 
106.—(1) A person may apply to the comptroller for the remission of a fee. 
(2) The comptroller may remit the whole or part of a search fee where—  45(a) in relation to an international application for a patent (UK), a copy of the International 
Search Report (as defined in rule 64) for th at application is available to the comptroller; 
or 
(b) a new application for a patent is filed as mentioned in section 15(9) and, in connection 
with the earlier application, the applicant has already paid the search fee for the 
invention described in the new application. 
(3) The comptroller may remit the whole or part of any fee where— 
(a) a person has requested the comptroller or an examiner to do something in accordance 
with the Act or these Rules; and 
(b) the request is withdrawn before it is carried out. 
(4) The comptroller may remit the whole or part of the fee payable in respect of a request for 
an opinion under section 74A where he has refused the request. 
(5) Where a supplementary protection certificate lapses or is declared invalid, the comptroller 
must remit any fee which has been paid in respect of the relevant period. 
(6) In paragraph (5) “the relevant period” is the period— 
(a) beginning with the next anniversary of the st art date following the date the certificate 
lapsed or was declared invalid; and 
(b) ending with the date the certificate woul d have expired but for its lapse or invalidity. 
(7) Any decision of the comptroller under this rul e is excepted from the right of appeal 
conferred by section 97. 
Correction of irregularities 
107.—(1) Subject to paragraph (3), the comptroller ma y, if he thinks fit, authorise the 
rectification of any irregularity of procedure connected with any proceeding or other matter before 
the comptroller, an examiner or the Patent Office. 
(2) Any rectification made under paragraph (1) shall be made— 
(a) after giving the parties such notice; and 
(b) subject to such conditions, 
as the comptroller may direct. 
(3) A period of time specified in the Act or listed in Parts 1 to 3 of Schedule 4 (whether it has 
already expired or not) may be extende d under paragraph (1) if, and only if— 
(a) the irregularity or prospective irregularity is attr ibutable, wholly or in part, to a default, 
omission or other error by the comptroller, an examiner or the Patent Office; and 
(b) it appears to the comptroller that the irregularity should be rectified. 
 
Time limits and delays 
Extension of time limits 
108.—(1) The comptroller may, if he thinks fit,  extend or further extend any period of time 
prescribed by these Rules except a period prescribed by the provisions listed in Parts 1 and 2 of 
Schedule 4. 
(2) The comptroller shall extend, by a period of tw o months, any period of time prescribed by 
the provisions listed in Part 2 of Schedule 4 where— 
(a) a request is filed on Patents Form 52; 
(b) no previous request has been made under this paragraph; and 
(c) that request is filed before the end of the peri od of two months beginning with the date 
on which the relevant period of time expired.  46(3) The comptroller may, if he thinks fit, extend or further extend any period of time 
prescribed by the rules listed in Part 2 of Schedule 4 where— 
(a) a request is filed on Patents Form 52; and 
(b) the person making the request has furnished evidence supporting the grounds of the 
request, except where the comptroller otherwise directs. 
(4) Each request under paragraph (2) or (3) for a period of time to be extended must be made 
on a separate form unless— 
(a) each of those requests relate to the same patent or application for a patent; and 
(b) the grant of each of those requests would result in the expiry of all the extended periods 
of time on the same date, 
in which case those requests may be combined and made on a single form. 
(5) Any extension made under paragraph (1) or (3) shall be made— 
(a) after giving the parties such notice; and 
(b) subject to such conditions, 
as the comptroller may direct, except that a period of time prescribed by the rules listed in Part 3 
of Schedule 4 may be extended (or further ext ended) for a period of two months only. 
(6) An extension may be granted under paragraph (1) or (3) notwithstanding the period of time 
prescribed by the relevant rule has expired. 
(7) But no extension may be granted in relation to  the periods of time prescribed by the rules 
listed in Part 3 of Schedule 4 after the end of  the period of two months beginning immediately 
after the period of time as prescrib ed (or previously extended) has expired. 
Extension of time limits specified by comptroller 
109.—(1) A request under section 117B(2) must be— 
(a) made in writing; and 
(b) made before the end of the period prescribed by paragraph (2). 
(2) The period prescribed for the purposes of section 117B(3) is two months beginning 
immediately after the expiry of the period to which section 117B(2) applies. 
Interrupted days 
110.—(1) The comptroller may certify any day as an interrupted day where— 
(a) there is an event or circumstance causing an interruption in the normal operation of the 
Patent Office; or 
(b) there is a general interruption or subsequent di slocation in the postal services of the 
United Kingdom. 
(2) Any certificate of the comptroller give n under paragraph (1) shall be displayed in the 
Patent Office and advertised in the journal. 
(3) The comptroller shall, where the time for doing anything under the Act expires on an 
interrupted day, extend that time to the next following day not being an interrupted day (or an 
excluded day). 
(4) In this rule— 
“excluded day” means a day specified as an excluded day in directions given under section 
120; and 
“interrupted day” means a day which has been certified as such under paragraph (1).  47Delays in communication services 
111.—(1) The comptroller shall extend any period of time specified in the Act or these Rules 
where he is satisfied that the failure to do somethi ng under the Act or these Rules was wholly or 
mainly attributable to a delay i n, or failure of, a communication service. 
(2) Any extension under paragraph (1) shall be made— 
(a) after giving the parties such notice; and 
(b) subject to such conditions, 
as the comptroller may direct. 
(3) In this rule “communication service” means a service by which documents may be sent and 
delivered and includes post, elect ronic communications, and courier. 
 
Copies available to the comptroller 
Copies available to the comptroller 
112.—(1) This rule applies where an applicant is not required to file a copy of an application at 
the Patent Office because that application or a copy of that application is available to the 
comptroller. 
(2) Where this rule applies the comptroller shall make  a copy (or further copy) of that 
application and certify it accordingly. 
 
Translations 
Translations 
113.—(1) Where any document filed at the Patent Office, or sent to the comptroller, is in a 
language other than English or Welsh it must be accompanied by a translation into English of that 
document. 
(2) But paragraph (1) does not apply to the following documents— 
(a) where the documents filed to initiate an a pplication for a patent include something 
which is or appears to be a description of the invention, the document containing that 
thing; 
(b) a priority application; 
(c) a copy of an application provided under section 15(10)(b)(ii); 
(d) a copy of a specification of a European patent (UK) filed in connection with an 
application by the proprietor to amend the specification; 
(e) a copy of an application for a European patent (UK) provided under section 
81(2)(b)(ii); 
(f) an international application for a patent (UK) , where a translation of the application or 
an amendment to it is a necessary translation; 
(g) a document referred to in paragraph (5). 
(3) Where more than one copy of the document mentioned in paragraph (1) is filed or sent, a 
corresponding number of translations shall accompany it. 
(4) Where a document to which paragraph (1) applies is not accompanied by a translation, the 
comptroller may, if he thinks fit, take no further action in relati on to that document. 
(5) In relation to an international application for a patent (UK), where any document which is 
in a language other than English or Welsh is— 
(a) referred to in an International Search Report or International Preliminary Report on 
Patentability; or  48(b) cited in an International Preliminary Examination Report, 
and the relevant report is filed at the Patent Office, the comptroller may direct that a translation 
into English of that document be filed. 
(6) Where a direction is given under paragraph (5) a tr anslation of that document must be filed 
before the end of the period of two months beginning w ith the date on which the direction is 
given; otherwise the comptroller may, if he thi nks fit, take no further action in relation to the 
application. 
(7) Subject to rule 82(1)(b), where a patent appli cation or any document related to such 
application is filed at the Patent Office or sent to the comptroller in Welsh, and is not accompanied by a translation into English, the comptroller must obtain such a translation. 
(8) In this rule a reference to a document includes a reference to a part of a document; and in 
paragraph (5) “International Preliminary Examination Report”, “International Preliminary Report 
on Patentability” and “International Search Report” and have the same meaning as in rule 64. 
Translations in proceedings in rel ation to a European patent (UK) 
114.—(1) Where— 
(a) proceedings are started before the comptroller in relation to a European patent (UK); 
and 
(b) the specification of that patent was published in French or German, 
the person who starts those proceedings shall file at the Patent Office a translation into English of 
the specification. 
(2) But paragraph (1) shall not apply where— 
(a) a translation into English of the specifi cation has been filed under section 77(6); or 
(b) the comptroller directs that a translation is unnecessary. 
(3) Where, in the course of such proceedings, leave is given to amend the specification of the 
patent, the proprietor shall file at the Patent O ffice a translation of the amendment into the 
language in which the specification of the patent was published. 
(4) This rule applies to making a request for an opinion under section 74A as it applies to 
proceedings started before the comptroller. 
Establishing the accuracy of translations 
115. If the comptroller has reasonable doubts about the accuracy of any translation of a 
document that has been filed at the Patent Office by any person in accordance with the Act or 
these Rules— 
(a) he shall notify that person of the reasons for his doubts; and 
(b) he may require that person to furnish ev idence to establish that the translation is 
accurate, 
and where that person fails to furnish evidence the comptroller may, if he thinks fit, take no further 
action in relation to that document. 
 
Supplementary Protection Certificates 
Supplementary protection certificates 
116.—(1) An application for— 
(a) a supplementary protection cer tificate shall be made on Patents Form SP1; and 
(b) an extension of the duration of a supplementary protection certificate under Article 8 of 
the Medicinal Products Regulation sha ll be made on Patents Form SP4. 
(2) The period prescribed for the purposes of paragraph 5(a) of Schedule 4A to the Act is—  49(a) three months ending with the start date; or 
(b) where the certificate is granted after the beginning of that period, three months 
beginning with the date the supplementar y protection certificate is granted. 
(3) The comptroller must send a notice to the applicant for the certificate— 
(a) before the beginning of the period of two months immediately preceding the start date; 
or 
(b) where the certificate is granted as mentioned in paragraph (2)(b), on the date the 
certificate is granted. 
(4) The notice must notify the applicant for the certificate of— 
(a) the fact that payment is required for the certificate to take effect; 
(b) the prescribed fee due; 
(c) the date before which payment must be made; and 
(d) the start date. 
(5) The prescribed fee must be accompanied by Patents Form SP2; and once the certificate has 
taken effect no further fee may be paid to extend the term of the certificate unless an application for an extension of the duration of the certif icate is made under the Medicinal Products 
Regulation. 
(6) Where the prescribed fee is not paid before the end of the period prescribed for the 
purposes of paragraph 5(a) of Schedule 4A to the Act, the comptroller shall, before the end of the 
period of six weeks beginning immediately after th e end of that prescribed period, and if the fee 
remains unpaid, send a notice to th e applicant for the certificate. 
(7) The notice shall remind the applicant for the certificate— 
(a) that payment is overdue; and 
(b) of the consequences of non-payment. 
(8) The comptroller must send the notices under this rule to— 
(a) the applicant’s address for service; and 
(b) the address to which a renewal notice would be sent to the proprietor of the basic patent 
under rule 39(3). 
 
Publications 
The journal 
117. The comptroller must pub lish a journal containing— 
(a) particulars of applications for and grants of patents and of other proceedings under the 
Act; 
(b) any directions given under section 120(1) sp ecifying hours of business or excluded 
days; 
(c) any directions under section 123(2A) setting out forms; and 
(d) any other information that the comptrolle r considers to be generally useful or important. 
Reports of cases 
118. The comptroller must make arrangements for the publication of— 
(a) reports of cases relating to patents, tr ade marks, registered designs or design right 
decided by him; and 
(b) reports of cases relating to patents (whet her under the Act or otherwise), trade marks, 
registered designs, copyright and desi gn right decided by any court or body (whether in 
the United Kingdom or elsewhere).  50Publication and sale of documents 
119. The comptroller may arrange for the pub lication and sale of copies of documents (in 
particular, specifications of patents and applica tions for patents) in the Patent Office. 
 
Transitional provisions and revocations 
Transitional provisions and revocations 
120.—(1) Schedule 5 (transitional provisions) shall have effect. 
(2) The instruments set out in Schedule 6 (revoca tions) shall be revoked to the extent specified. 
 
 
 
 Triesman  
 Parliamentary Under Secretary of Stat e for Intellectual Property and Quality 
19th November 2007 Department for Innovation, Universities and Skills  51 SCHEDULE 1 Rule 13(1) 
BIOLOGICAL MATERIAL 
Introductory 
1. In this Schedule— 
“authorisation certificate” means a certificate issued by the comptroller authorising a 
depositary institution to make available a sample of biological material; 
“Budapest Treaty” means the Treaty on the International Recognition of the Deposit of Micro-
organisms for the purposes of Patent Procedure signed at Budapest on 28th April 1977, as 
amended on 26th September 1980, and includes referenc es to the regulations made under that 
Treaty; 
“depositary institution” means an institution which— 
(a) carries out the functions of receiving, accepting and storing biological material and the 
furnishing of samples of such biological material (whet her generally or of a specific 
type); and 
(b) conducts its affairs, in so far as they relate to  the carrying out of those functions, in an 
objective and impartial manner; 
“expert” means independent expert; “first requirement” means the first requirement in paragraph 3; 
“international depositary authority” means a depositary institution which has acquired the 
status of international depos itary authority as provided in the Budapest Treaty; and 
“second requirement” means the second requirement in paragraph 3. 
Specification of an application for a patent, or of a patent, for an invention which involves 
the use of or concerns biological material 
2.—(1) This paragraph applies where the specification of an application for a patent, or of a 
patent, for an invention which involves the use of or concerns biological materi al does not disclose 
the invention in a manner which is clear enough and complete enough for the invention to be 
performed by a person skilled in the art. 
(2) Where this paragraph applies, the specification is to be treated as disclosing the invention 
in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art, if— 
(a) the first requirement and the second requirement are satisfied; and 
(b) the specification of the application as filed contains such relevant information as is 
available to the applicant on the characteristics of the biological material. 
The first and second requirements 
3.—(1) The first requirement is that— 
(a) on or before the date of filing of the applica tion, the biological material has been 
deposited in a depositary institution; and 
(b) that institution will be able to furnish subseq uently a sample of the biological material. 
(2) The second requirement is that before the end of the relevant period— 
(a) the name of the depositary institution and the accession number of the deposit are 
included in the specification; and  52(b) where the biological material was deposite d by a person other than the applicant (“the 
depositor”)— 
(i) a statement is filed which identifies the name and address of the depositor, and 
(ii) a statement by the depositor has been file d, which authorises the applicant to refer to 
the biological material in  his application and irrevocab ly authorises the making 
available to the public of the biological material in accordance with this Schedule. 
(3) The relevant period is the first to expire of— 
(a) the period of sixteen months— 
(i) where there is no declared priority date, begi nning with the date of filing of the 
application; or 
(ii) where there is a declared priority dat e, beginning with that date; 
(b) where the applicant has made a request under sec tion 16(1) to publish the application 
during the period prescribed for the purposes of that  section, the period ending with the 
date of the request; or 
(c) where the applicant was notified under rul e 52(2), the period of one month beginning 
with the date of the notification. 
(4) Where— 
(a) the application is filed with the European Patent Office and documents have been filed 
under the provisions of the European Patent Convention corresponding to sub-paragraph (2); or 
(b) the application in suit is an international application for a patent (UK) and documents 
have been filed in accordance with the Patent Co-operation Treaty under the provisions 
of the Treaty corresponding to sub-paragraph (2), 
the second requirement shall be tr eated as having been met. 
(5) In this paragraph— 
“accession number” means the number given to the deposit by a depositary institution; “specification” means the specification of an application for a patent. 
A request by a person for biological  material to be made available 
4.—(1) This paragraph applies when paragraph 7 does not apply. 
(2) Where an application for a patent has been published, any person may request the 
comptroller to issue an authorisation certificate. 
(3) Where the application has not been published, a person who has been notified in 
accordance with section 118(4) may request the comptroller to issue an authorisation certificate. 
(4) A request must be made on Patents Form 8. 
(5) Where the biological material has been deposited at an international depositary authority, 
the request must be accompanied by the relevant form required by the Budapest Treaty. 
(6) Where the comptroller grants the request, he must send copies of the request and the 
certificate (and any form requir ed by the Budapest Treaty) to— 
(a) the applicant for, or the proprietor of, the patent; 
(b) the depositary institution; and 
(c) the person making the request. 
The undertaking 
5.—(1) A request made under paragraph 4 or 7 shall include an undertaking by the person 
making the request—  53(a) not to make the biological material, or any material derived from it, available to any 
other person; and 
(b) not to use the biological material, or any material derived from it, except for 
experimental purposes relating to the subject matter of the invention, 
subject to the following sub-paragraphs. 
(2) The applicant for, or the proprietor of, a patent may agree to limit the effect of the 
undertaking in a particular case. 
(3) The undertaking shall cease to have effect— 
(a) when the application for a pa tent is terminated or withdrawn (but it will continue to 
have effect if the application is reinstated or resuscitated); or 
(b) when the patent ceases to have effect. 
(4) Where a request is made— 
(a) by a government department or any person aut horised in writing by a government 
department; and 
(b) for the purposes of using the patented invention for the services of the Crown, 
no undertaking is required and any undertaking by the government department or the person so 
authorised shall not have effect. 
(5) Where— 
(a) a licence under the patent to which the undertaki ng relates is available as of right; or 
(b) a compulsory licence in respect of the patent to  which the undertaking relates has been 
granted, 
any undertaking made shall have no effect to the extent necessary to give effect to any such 
licence. 
Restriction of availability of biological material to experts 
6.—(1) Where the first or the second condition is met (except in relation to Crown use), 
paragraph 7 applies until the end of the relevant period. 
(2) The first condition is— 
(a) the applicant requests on Patents Form 8A th at a sample of the bi ological material 
should only be made available to an expert; and 
(b) that request is made before the preparations for th e application’s publication have been 
completed by the Patent Office. 
(3) The second condition is that, in relation to an international application for a patent (UK), 
the applicant made a reference to the deposited biological material in accordance with the Patent 
Co-operation Treaty. 
(4) Where the first condition is met, the comptro ller shall, when he publishes the application, 
include a notice that the provisions of paragraph 7 apply. 
(5) In paragraph 6(1) “the relevant period” is— 
(a) where the patent is granted, the period ending with the date on which the patent was 
granted; and 
(b) where the application is terminated or w ithdrawn, twenty years beginning with the date 
of filing. 
(6) Nothing in this or the following paragraph affects the rights under section 55 of any 
government department or any person authorised in  writing by a government department. 
Request for a sample to be made available to expert 
7.—(1) A request for a sample to be made available to an expert must be made on Patents Form 
8 and must include details of the expert.  54(2) Where the biological material has been deposited at an international depositary authority, 
the request must be accompanied by any form required by the Budapest Treaty. 
(3) The comptroller must send a copy of Patents Fo rm 8 to the applicant for the patent. 
(4) Before the end of the period of one month beginning with the date on which a copy of 
Patents Form 8 is sent by the comptroller, the applicant may give notice of his objection to the 
particular expert, and where he objects the comptroller shall determine the matter. 
(5) Where— 
(a) the applicant does not object to th e sample being made available; or 
(b) following an objection, the comptroller decides that the sample should be made 
available to the particular expert, 
the comptroller must issue a certificate authorising the release of a sample to the expert. 
(6) A copy of Patents Form 8 (and any form required by the Budapest Treaty) and any 
certificate issued under sub-paragraph (5) must be sent to— 
(a) the applicant for the patent; 
(b) the depository institution where the samp le of the biological material is stored; 
(c) the expert; and 
(d) the person who made the request. 
New deposits 
8.—(1) This paragraph applies where the first, second or third circumstance occurs. 
(2) The first circumstance is that the biological material ceases to be available at the depositary 
institution because it is no longer viable. 
(3) The second circumstance is that— 
(a) the depositary institution is, for any other reason, unable to supply the biological 
material; or 
(b) the place where the biological material is deposited is no longer a depositary institution 
for that type of material (whether temporarily or permanently). 
(4) The third circumstance is that th e biological material is tr ansferred to a different depositary 
institution. 
(5) The first requirement and the second requirement  shall be treated as having been complied 
with throughout the relevant period, if and only if— 
(a) where the first or second circumstance occurs— 
(i) a new deposit of biological material is made at the relevant depositary before the end 
of the relevant period, and 
(ii) that deposit is accompanied by a statement, signed by the person making the deposit, 
that the biological materi al deposited is the same as that originally deposited; and 
(b) in all circumstances, the applicant or propri etor, before the end of the relevant period, 
applies to the comptroller to amend the specificati on of the application for the patent, or 
the patent, so that it meets the second requirement. 
(6) For the purposes of paragraph (5) “the relevant peri od” is the period beginning when the 
first, second or third circumstance occurs and ending— 
(a) three months after the date on which the depositor is notified by the depositary 
institution that the first, second or third circumstance occurred; or 
(b) where it expires later, three months after the date on which that circumstance is 
advertised in the journal. 
(7) The relevant depositary is— 
(a) where only the first circumstance occurs, th e depositary institution where the original 
deposit was made; or  55(b) in any other case, any depositary institution.  56 
 SCHEDULE 2 Rule 14 
FORMAL AND OTHER REQUIREMENTS 
PART 1 
REQUIREMENTS: ALL DOCUMENTS 
 
1. A4 matt white paper must be used. 
2. A document in paper form must be free from tears, folds or similar damage and its contents 
must be suitable for reproduction. 
3. Frames (lines surrounding matter) must not be used. 
PART 2 
REQUIREMENTS: DOCUMENTS (OTHER THAN DRAWINGS) 
 
4. The pages of the description and claims must  be numbered consecutively in a single series. 
5. But where a sequence listing is set out at the end of the application, it must be numbered 
consecutively in a separate series. 
6. Page numbers must be located at the top or bottom of the page (but not in the margin) in the 
centre. 
7. The minimum margins in any document must be 20mm. 
8. Each of the following— 
(a) the request for the grant of a patent; 
(b) the description; 
(c) the claims; 
(d) the abstract, 
must begin on a new sheet of paper. 
9. The abstract, description and claims mu st use at least 1.5 line spacing, except where they 
form part of a translation or a sequence listing. 
10. The capital letters in any typeface or font used must be more than 2mm high. 
PART 3 
REQUIREMENTS: DRAWINGS 
 
11. There must be a margin around any draw ing which must be at least— 
(a) at the top and left side, 20mm; 
(b) at the right side, 15mm; and  57(c) at the bottom, 10mm. 
12. All drawings must be numbered consecutively in a single series. 
13. The drawings must begin on a new sheet of paper. 
14. The pages containing the drawings must  be numbered consecutively in a single series. 
15. Drawings must comprise black lines and must not be shaded. 
16. Drawings may include cross-hatching to illustrate the cross-sections of a thing. 
17. Any scale or other reference for maki ng measurement must be represented 
diagrammatically. 
18. Any drawing must be produced in such manner that it would still be clear if it were reduced 
by linear reduction to two thirds of its original size. 
19. A drawing must not be included in the descrip tion, the claims, the abstract or the request for 
the grant of a patent. 
20. The capital letters in any typeface or font used in any drawing must be more than 3mm high. 
PART 4 
OTHER REQUIREMENTS 
21. References must only be included in the drawing where they are mentioned in either the 
description or the claims. 
22. Tables of information may only be included in the claims if the comptroller agrees. 
23. The terminology and any references used must be consistent throughout the application for a 
patent. 
24. Where units of measurement used in the applica tion are not standard international units of 
measurement, the equivalent standard international  units of measurement must be provided, and 
where no international standard exists, units must be used which are generally accepted in the 
field. 
25. Only technical terms, signs and symbols which are generally accepted in the field may be 
used.  58 
 SCHEDULE 3 Rule 73 
PROCEEDINGS HEARD BEFORE THE COMPTROLLER 
PART 1 
APPLICATIONS, REFERENCES AND REQUESTS 
Patents Act 1977 
section 8(1) (reference regarding entitlement in relation to a patent under the Act) 
section 10 (request for directions for handling a joint application) 
section 11(5) (reference regarding entitlement to  a licence to continue working after 
transfer of application) 
section 12(1) (reference regarding entitlement in relation to a foreign or convention 
patent) 
section 12(4) (reference involving joint applications on entitlement in relation to a foreign 
or convention patent) 
section 13(3) (application to comptroller to remove person mentioned as inventor) 
section 37(1) (determination of ri ght to patent after grant) 
section 38(5) (reference regarding entitlement to  a licence to continue working after 
transfer of patent) 
section 40 (application for compensation by an employee) section 41(8) (application to vary order for compensation for certain inventions) 
section 46(3) (application to settle terms of licence available as of right) section 47(3) (application to cancel licence available as of right) 
section 48(1) (application for a compulsory licence) 
section 50A(2) (application following merger and market investigation) 
section 51(1) (application by Minister following report of Competition Commission) section 52(2)(a) (application to cancel compulsory licence) section 61(3) (reference on question of infringement before the comptroller) section 71 (declaration of non-infringement) section 72 (application to revoke patent) 
 
Patents Rules 2007 rule 10(2) (application to be mentioned as inventor) rule 88(1) (application to hold proceedings in Scotland) paragraph 7(4) of Schedule 1 (notice of objection to expert) 
 
Compulsory Licensing Regulation Article 5(c) of the Compulsory Licensing Regulation (application to terminate EU 
compulsory licence) 
Article 6(1) of that Regulation (app lication for an EU compulsory licence) 
Article 10(8) of that Regulation (application to access books and records)  59Article 16(1), second paragraph, of that Regula tion (application for a review of an EU 
compulsory licence) 
Article 16(4) of that Regulation (applica tion for modification of an EU compulsory 
licence) 
 
Medicinal Products Regulation and Plant Protection Products Regulation 
Article 14(d) of the Medicinal Products Regula tion and the Plant Protection Products 
Regulation (request to review lapse of supplementary protec tion certificate) 
Article 15 of those Regulations (application for declaration of invalidity of supplementary 
protection certificate) 
Article 15a of the Medicinal Products Regul ation (application for revocation of an 
extension of the duration of a suppl ementary protection certificate) 
PART 2 
OPPOSITIONS WHICH START PROCEEDINGS 
 
Patents Act 1977 
section 27(5) (opposition to amendment  of specification after grant) 
section 29(2) (opposition to surrender of patent) 
section 47(6) (opposition to cancellation of licence available as of right), where the 
application was made by the proprietor of the patent 
section 75(2) (opposition to amendment during infringement or revocation proceedings) section 117(2) (opposition to correction of error in patents and applications) 
 
PART 3 
OPPOSITIONS AFTER PROCEEDINGS HAVE STARTED 
 
Patents Act 1977 
section 47(6) (opposition to cancellation of licence available as of right), where the 
application was made by a person other than the proprietor of the patent 
section 52(1) (opposition to an application for compulsory licence or under section 50A 
or 51) 
section 52(2)(b) (opposition to an applica tion to cancel a compulsory licence) 
PART 4 
RULES WHICH APPLY TO ANY PROCEEDINGS HEARD BEFORE THE 
COMPTROLLER 
 
Patents Rules 2007 
rule 74 (overriding objective) rule 79 (copies of documents) rule 80(2) to (6) (evidence and the hearing) rule 81 (alteration of time limits)  60rule 82 (general powers of the comptroller in relation to proceedings before him) 
rule 84 (hearings in public) rule 87 (evidence in proceedings before the comptroller) 
PART 5 
RULES WHICH APPLY TO A REVIEW OF AN OPINION 
 
Patents Rules 2007 rule 83 (striking out a statement of case and summary judgment) 
rule 85 (security for costs or expenses) rule 86 (powers of comptroller to compel attendance of witness and production of 
documents) 
rule 88 (proceedings in Scotland)  61 
 SCHEDULE 4 Rule 108 
EXTENSION OF TIME LIMITS 
PART 1 
PERIODS OF TIME THAT CANNOT BE EXTENDED 
 
rule 6(2)(b) (declaration of priority for the purposes of section 5(2) made after the date of 
filing) 
rule 7(1) (period for making a request to the comptroller for permission to make a late 
declaration of priority) 
rule 32(1) (application to reinstate a terminated application) rule 37 and 38 (renewal of patents) rule 40(1) (application to restore a lapsed patent) rule 43(4) (application to cancel entry that licence available as of right) rule 58(3) (request for a direction under section 81) rule 59(1) (request from a forei gn industrial property office for a direction under section 
81) 
rule 66(3) (period for making a request to the comptroller for permission to make a late 
declaration of priority in respect of an inte rnational application for a patent (UK)) 
rule 76(2) (notice of opposition), except in relation to an opposition under section 27(5) 
where there are pending before the court or the comptroller proceedings in which the 
validity of the patent is put in issue 
rule 77(8) and (10) (opposition periods) rule 104(2) (period for filing an address for service), in relation to an application for a 
patent 
rule 109 (extension of time limits specified by comptroller) 
rule 116(2) (fee for supplementary protection certificate) 
paragraph 8(5) of Schedule 1 (new deposits of biological material) 
PART 2 
PERIODS OF TIME THAT MAY BE EXTENDED UNDER RULE 108(2) OR 
108(3) 
 
rule 8(1) and (2) (filing of information and priority documents) 
rule 10(3) (filing of statement of inventorship and the right to be granted a patent) 
rule 18(1) (missing parts) rule 21 (extensions for new applications) rule 22(1), (2) and (5) (periods prescribed for the purposes of sections 15(10) and 17(1)) rule 28(2), (3) and (5) (request for substantive examination) rule 30 (period for putting an application in order)  62rule 56(6) and (7) (filing of a translati on of European patent (UK) specifications) 
rule 58(4) (request under section 81(2)(b)(i)) rule 59(3) (request under section 81(2)(b)(ii)) rule 60 (request for substantive examination following a direction under section 81) 
rule 66(1) and (2) (international  applications for patents: entry into national phase) 
rule 68 (international applications for patents: altered prescribed periods) 
paragraph 3(2) of Schedule 1 (filing of information in relation to the deposit of biological 
matter) 
PART 3 
PERIODS OF TIME TO WHICH RULE 108(5) AND 108(7) RELATE 
 
rule 10(3) (filing of statement of inventorship and the right to be granted a patent) 
rule 12(3) and (9) (filing of name and address and translations) rule 19 (new applications file d as mentioned in section 15(9)) 
rule 21(1)(a) and (2)(a) (extensions for new applications) rule 22 (periods prescribed for the purposes of sections 15(10) and 17(1)) rule 28 (request for substantive examination) rule 30 (period for putting application in order) rule 58(4) (request under section 81(2)(b)(i)) rule 59(3) (request under section 81(2)(b)(ii)) rule 60 (request for substantive examination following a direction under section 81) 
rule 66(1) and (2) (international  applications for patents: entry into national phase) 
rule 68 (international applications for patents: altered prescribed periods)  63 
 SCHEDULE 5 Rule 120(1) 
TRANSITIONAL PROVISIONS 
Interpretation 
1. In this Schedule, the “1995 Rules” means the Patents Rules 1995( a) as they had effect 
immediately prior to their revocation by these Rules. 
Periods of time 
2. Where, in relation to any proceedings under the Act, a period of time prescribed by the 1995 
Rules for the purposes of a particular provision of the Act has not expired before the date on 
which these Rules come into force, th at period continues to apply. 
Proceedings before the comptroller 
3. Proceedings before the comptroller which commenced before these Rules came into force 
shall continue in accordance with Part 7 of these Rules, subject to paragraph 2 of this Schedule. 
Service by post 
4. Any document sent to the comptroller by posting it in the United Kingdom before the day 
these Rules come into force shall be deemed to have been filed at the time when it would be 
delivered in the ordinary course of post. 
Applications to which certain amendments made to the Act by the Regulatory Reform 
(Patents) Order 2004 do not apply. 
5.—(1) This paragraph applies to an application for a patent to which article 20, 21 or 22 of the 
Regulatory Reform (Patents) Order 2004( b) applies. 
(2) Any reference in these Rules to— 
(a) section 15(9) of the Act is a reference to section 15(4) of the unamended Act; 
(b) section 15(10)(a) of the Act is a reference to section 15(5)(a) of the unamended Act; 
(c) section 15(10)(b) or (c) of the Act shall be disregarded; 
(d) section 15(10)(d) of the Act is a reference to section 15(5)(b) of the unamended Act; 
(e) section 15A of the Act is a reference to section 17(1) of the unamended Act; 
(f) section 17(1)(c)(i) of the Act is a reference to section 17(1)(a) of the unamended Act; 
and 
(g) Patents Form 9A is a reference to Patents Form 9. 
(3) The following provisions do not apply— 
rule 6(2) and (3) (declaration of priorit y made after date of filing); 
rule 7 (permission to make late  declaration under section 5(2B)); 
rule 12(2), (3), (8) and (9) (notificati ons of deficiencies in application); 
rule 17 (references under section 15(1)(c)(ii)); 
                                                                                                                                                               
 
(a) SI 1995/2093; as amended by SI 1999/1092, 1999/1899, 1999/3197, 2001/1412, 2002/529, 2003/513, 2004/2177 (C. 94), 
2004/2358, 2004/3205 (C. 140), 2005/2496, 2006/760 and 2007/677. 
(b) SI 2004/2357.  64rule 18 (missing parts); 
rule 22(3) (prescribed period for the purpose of section 15(10)(b)(ii)). 
(4) In this paragraph “unamended Act” means the Act as it had effect immediately before the 
Regulatory Reform (Patents) Order 2004 came into effect. 
Security for costs 
6. Rule 85 does not apply in respect of proceedings started before 1st October 2005. 
Patent applications filed before 7th January 1991 
7.—(1) This paragraph applies to an application for a patent filed before 7th January 1991( a) 
and to a patent granted in pursuance of such application. 
(2) Schedule 1 has effect with the following modifications. 
(3) In paragraph 2, for the words “involves the use of or concerns biological material” 
substitute the words “requires for its perform ance the use of a micro-organism”. 
(4) In paragraph 5(3)(b), insert at the beginning the words “in the case of an undertaking given 
in accordance with paragraph 1(a),” and insert at the end the word “or” followed by: 
“(c) in the case of an undertaking given in accordance with paragraph (1)(b), when the 
patent is granted.”. 
(5) Any reference to “biological material”— 
(a) in paragraphs 3(1)(a), 4, 5 and 8 is a reference to “culture of the micro-organism”; and 
(b) other than in those provisions, is a reference to “micro-organism”. 
(6) For the purposes of paragraph 3(2) the relevant period is the period of two months 
beginning with the date of filing of the application for a patent. 
(7) The following provisions do not have effect— 
paragraph 3(3) (defining relevant period); paragraph 6 (restriction of availability of biological material to experts); paragraph 7 (request for sample to be made available to expert). 
Patent applications filed between 7th January 1991 and 27th July 2000 
8.—(1) This paragraph applies to an application for a patent filed during the period beginning 
with 7th January 1991 and ending with 27th July 2000( b) and to a patent granted in pursuance of 
such application. 
(2) Schedule 1 to these Rules has effect w ith the following modifications. 
(3) In paragraph 2, for the words “involves the use of or concerns biological material” 
substitute the words “requires for its perform ance the use of a micro-organism”. 
(4) In paragraph 5(3)(b), insert at the beginning the words “in the case of an undertaking given 
in accordance with paragraph 1(a),” and insert at the end the word “or” followed by: 
“(c) in the case of an undertaking given in accordance with paragraph (1)(b), when the 
patent is granted.”. 
(5) Any reference to “biological material”— 
(a) in paragraphs 3(1)(a), 4, 5, 6(3), 7(2) and 8 is a reference to “culture of the micro-
organism”; and 
                                                                                                                                                              
 
 
(a) The date that section 125A of the Patents Act 1977 came into effect (see paragraph 30 of Schedule 5 to the Copyright, 
Designs and Patents Act 1988 (c. 48)) and SI 1990/2168. 
(b) The date that SI 2000/2037 came into force. Regulation 9 of that SI limits the amendments to applications made after the 
provision came into force.  65(b) other than in those provisions, is a reference to “micro-organism”. 
(6) Paragraph 2(2)(b) (requirement that application contains relevant information) does not 
have effect. 
(7) In paragraph 6(5)(b), for the words from “the period of 20 years” to the end of that 
provision substitute “the period ending with th e date on which the application was terminated or 
withdrawn”. 
(8) The specification of an application for a patent,  or of a patent, must mention any 
international agreement under which the micro-organism is deposited. 
Continued application of Patents Rules 1968 to existing patents 
9.—(1) This paragraph and paragraph 10 apply to existing patents and applications. 
(2) Rules 4, 58 and 59 of the Patents Rules 1968( a) continue to apply. 
Application of these Rules to ex isting patents and applications 
10.—(1) Rules 4, 10(2), 44 to 50, 73 to 88, 101, 1 03 to 105 and 107 apply to existing patents 
and applications. 
(2) In those provisions as they apply by virt ue of this paragraph, a reference to a specified 
provision of these Rules other than one of t hose provisions is a reference to the corresponding 
provision of the Patents Rules 1968 (any provi sion of those Rules being treated as corresponding 
to a provision of these Rules if it was made for purposes which are the same as or similar to that 
provision of these Rules). 
Application of the 1995 Rules to sections 8 and 12 
11. If before 1st January 2005 a question has been referred to the comptroller under section 8 or 
12, in relation to that reference, sections 8, 11 and 12 have effect as if the amendments to those 
sections by the Patents Act 2004( b) had not been made and rules 9 and 13 of the 1995 Rules have 
effect as in force immediately before 1st January 2005. 
 
                                                                                                                                                               
 
(a) SI 1968/1389. 
(b) 2004 (c.16).  66 
 SCHEDULE 6 Rule 120(2) 
REVOCATIONS 
 
Title and number Extent of revocation 
The Patents Rules 1978 (SI 1978/216) Rule 124. 
The Patents Rules 1995 (S I 1995/2093) The whole rules. 
The Patents (Supplementary Protection Certificates) 
Rules 1997 (SI 1997/64) The whole rules. 
The Patents (Fees) Rules 1998 (SI  1998/1778) The whole rules. 
The Patents and Trade Marks (World Trade Organisation) 
Regulations 1999 (SI 1999/1899) Regulations 9 to 12. 
The Patents (Amendment) Rules 1999 (SI 1999/1092) The whole rules. 
The Patents (Fees) (Amendment) Rules  1999 (1999/1093) The whole rules. 
The Patents (Amendment) (No. 2) Rules 1999 (SI 
1999/3197) The whole rules. 
The Patents (Amendment) Rules 2001 (SI 2001/1412) The whole rules. 
The Patents (Amendment) Rules 2002 (SI 2002/529) The whole rules. 
The Patents (Electronic Comm unications) (Amendment) 
Rules 2003 (SI 2003/513) The whole rules. 
The Patents Act 2004 (Commencement No. 1 and 
Consequential and Transitional Provisions) Order 2004 (SI 2004/2177) (C.94) Articles 3 to 5. 
The Patents (Amendment) Rules 2004 (SI 2004/2358) The whole rules. 
Articles 3 to 8. 
Article 9(2). The Patents Act 2004 (Commencement No. 2 and 
Consequential, etc. and Transitional Provisions) Order 
2004 (SI 2004/3205) (C.140)  
The Patents (Translations) Rules 2005 (SI 2005/687) The whole rules. 
The Patents (Amendment) Rules 2005 (SI 2005/2496) The whole rules. 
The Patents, Trade Marks and Designs (Address For 
Service and Time Limits, etc) Rules 2006 (SI 2006/760) Rules 4 to 9. 
The Patents (Amendment) Rules 2007 (SI 2007/677) The whole rules. 
  67EXPLANATORY NOTE 
(This note is not part  of the Rules) 
These Rules are made under the Patents Act 1977 (c. 37) (“the Act”). They  regulate applications 
for patents and other procedures before the Patent Office  in relation to patents. These Rules make 
substantial changes to both the drafting and effect of the Patents Rules 1995 (SI 1995/2093) which 
are revoked together with the other instruments listed in Schedule 6 to these Rules. 
Part 1 of these Rules includes the commencement and general interpretation provisions. 
Part 2 of these Rules includes the provisions relating to  applications for patents. In particular, Part 
2 includes provisions on international exhibiti ons (the Convention on In ternational Exhibitions 
signed in Paris on 22nd November 1928 is published in Cmnd 3776 Treaty Series 9/1931 and is 
available on the website of the Foreign and Commonwealth Office), declarations of priority, 
mention of the inventor, the form and content of applications, publication of the application, 
preliminary examination, search and substantive examination. It also includes special provisions 
on new applications filed under section 8(3), 12(6) or 37(4) or as mentioned in section 15(9) of the Act. 
Part 3 of these Rules includes the provisions relating to  granted patents. In particular, this Part 
includes the provisions on the certificate of grant, renewal of the patent and surrender. 
Part 4  of these Rules includes the provisions relati ng to the register and other information. In 
particular, it sets out the information which mu st appear on the register and the conditions for 
inspecting documents under section 118 of the Act. Also rule 54  makes provision for persons to be 
notified of certain relevant events. 
Part 5  of these Rules includes the provisions rela ting to European patents (UK). In particular, it 
includes the translation requirements, th e procedure for making a conversion request and certain 
rules relating to the United Kingdom’s oblig ations under the European Patent Convention made in 
Munich on 5
th October 1973 (published in Cmnd 8510 Treaty Series 16/1982 and also available on 
the website of the European Patent Organisation). 
In particular, rule 56(9) and (10)  implement Article 1(1) of the Agreement on the application of 
Article 65 of the Convention on the Grant of European Patents made in London on 17th October 
2000. This is known as the London Agreement and is published in Cm 5247 Miscellaneous Series 
No. 9 (2001) and the day the Agreement comes into force will be published by the Patent Office. 
Rule 56(9) and (10)  replaces the Patents (Translations) Rules 2005 (SI 2005/687). 
Part 6 of these Rules includes the provisions relati ng to international applications for a patent 
(UK). These are made under the Patent Co-operation Treaty signed at Washington on 19th June 
1970 (published in Cmnd 7340 Treaty Series 78/1978 and also available on the website of the 
World Intellectual Propert y Organisation (WIPO)). Part 6  of these Rules makes provisions for 
translations and beginning the na tional phase, and (for the purposes of these applications) alters 
periods prescribed elsewhere in the Rules. 
Part 7 of these Rules includes provisions governing proceedings heard before the comptroller. In 
particular rule 74 creates an overriding objective for such proceedings. Rule 76 sets out how a 
person starts proceedings, and rules 77 and 78  govern how other persons may join those 
proceedings. Subsequent rules set out requirements for, and powers of the comptroller in relation 
to, the giving of evidence and the management of proceedings. 
Part 8 of these Rules includes provisions on opini ons on validity or infringement under section 
74A of the 1977 Act. It also sets out the procedure for reviewing such opinions. 
Part 9 of these Rules  includes miscellaneous provisions, incl uding those on agents, corrections, 
address for service, translations, extension of periods of time, supplementary protection 
certificates and publication of documents. Schedule 1  makes provision for the deposit of biological  material. This gives effect to the 
Budapest Treaty on the International Recogniti on of the Deposit of Micro-organisms for the 
purposes of Patent Procedure signed at Budapest on 28th April 1977, as amended on 26th 
September 1980 (published in Cmnd 8136 Treaty Ser ies 5/1981 and avail able on the WIPO 
website). 
Schedule 2  contains formal and other requirements. 
Schedule 3 contains a list of applications, references, r equests and oppositions to which Part 7 
applies. It also lists those rules in Part 7 which apply to any proceedings before the comptroller 
and those rules in Part 7 which apply to proceedings for a review of an opinion. 
Part 1 of Schedule 3  includes applications that may be under Co mmunity legislation in relation to 
EU compulsory licences and supplem entary protection certifi cates. The European Parliament and 
Council adopted Regulation (EC) No 816/2006 of 17 May 2006 on compulsory licensing of 
patents relating to the manufacture of pharmaceutical products for export to countries with public 
health problems (OJ No L 157, 9.6.2006, p1). The European Parliament and Council also adopted Regulation (EC) No 1901/2006 of 12 December 2006 on medicinal products for paediatric use (OJ 
No L 378, 27.12.2006, p1). This amends, among ot her Community instruments, Council 
Regulation (EEC) No 1768/92 of 18 June 1992 concerning the creati on of a supplementary 
protection certificate for medicinal  products (OJ No L 182, 2.7.92, p1). Provision is also made in 
relation to Regulation (EC) No 1 610/96 of the European Parliament and of the Council of 23 July 
1996 concerning the creation of a supplementary protection certificat e for plant protection 
products (OJ No L 198, 8.8.96, p30). 
Schedule 4  relates to the extension of time limits. 
Schedule 5 contains transitional provisions. 
An impact assessment has been prepared and copies placed in the libraries of both Houses of 
Parliament. Copies are also ava ilable from Patents Legal Section, Concept House, Cardiff Road, 
Newport NP10 8QQ. 
 
¤ Crown copyright 2007 
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. 
E1604  11/2007 171604T  19585 S.I. 2007 No. 3291 The Patents Rules 2007