STATUTORY INSTRUMENTS
S.I. No. 194 of 2009
————————
PATENTS (AMENDMENT) RULES 2009
(Prn. A9/0710)2[194]
S.I. No. 194 of 2009
PATENTS (AMENDMENT) RULES 2009
I, MARY COUGHLAN, Minister for Enterprise, Trade and Employment, in
exercise of the powers conferred on me by section 114 and, with the sanction ofthe Minister for Finance, section 99 of the Patents Act 1992 (No. 1 of 1992),hereby make the following Rules:
1. These Rules may be cited as the Patents (Amendment) Rules 2009.2. In these Rules—
“Act” means Patents Act 1992 (No. 1 of 1992);“Rules of 1992” means Patents Rules 1992 (S.I. No. 179 of 1992).
3. The Rules of 1992 are amended—
(a) in Rule 3—
(i) in paragraph (1), by substituting “ ‘Form’ means a form set out in
Schedule II;” for “ ‘Form’ means a form set out in Schedule II.”,and by inserting after that definition the following definition:
“ ‘Implementing Regulations’ means the Implementing Regu-
lations to the European Patent Convention.”,
and
(ii) by substituting the following for paragraph (2):
“(2) In these Rules, unless otherwise indicated—
(a) a reference by number to a Rule is to the Rule of
these Rules bearing that number, and a reference to aparagraph or other division, by whatever name called,shall be read as a reference to a paragraph or othersuch division of the Rule or of the provision, as thecase may be, in which the reference occurs,
(b) a reference by number to a section is to the said num-
bered section of the Act.”,
Notice of the making of this Statutory Instrument was published in
“Iris Oifigiu ´il” of 26th May , 2009.[194] 3
(b) by substituting the following for paragraph (1) of Rule 6:
“(1) Subject to the provisions of Rules 86 (1) and (2), if the applicant
is not the sole inventor or the applicants are not the joint inventors,the statement under section 17(2) identifying the inventor or inventorsand, where required by section 17(2)( b), the derivation of the right of
the applicant or applicants to be granted the patent shall be made onForm No. 2 within the period of sixteen months after the date ofpriority or, where there is no claim to priority, the date of filing theapplication.”,
(c) by inserting the following Rules after Rule 8:
“Name and address of applicant.
8A. (1) Where the documents filed at the Patents Office under
section 23(1)( b) do not include the applicant’s name and address, the
Controller shall notify the applicant that same are required.
(2) Where the applicant has been notified under paragraph (1), he,
she, they or it shall, before the end of the period of two months startingon the date of the notification, file his, her, their or its name andaddress; otherwise the Controller shall, subject to paragraph (3), refusethe application.
(3) On a request made to him or her at any time within the period
referred to in paragraph (2), the Controller may further extend, by notmore than one month, the said period.
Prescribed period for payment of filing fee —section 18(3).
8B. (1) The prescribed filing fee shall be paid within one month
from the date of filing.
(2) Where the filing fee has not been paid within the period in para-
graph (1) the Controller shall invite the applicant to pay the filing feetogether with the prescribed additional fee within one month fromthe invitation.”,
(d) by inserting the following Rules after Rule 10:
“Translation of description.
10A. (1) Where—
(a) the documents filed at the Patents Office under section
23(1)( c)(i) include a description of the invention in a langu-
age other than Irish or English, and
(b) the applicant has not filed a translation into Irish or English
of that description with a declaration that it is a completeand accurate translation into Irish or English of thatdescription,4[194]
the Controller shall notify the applicant that such a translation with
such a declaration is required.
(2) Where the applicant has been notified under paragraph (1), he,
she, they or it shall, before the end of the period of two months startingon the date of the notification, file a translation of that descriptionwith a declaration; otherwise the Controller shall, subject to paragraph(3), refuse the application.
(3) On a request made to him or her at any time within the period
referred to in paragraph (2), the Controller may further extend, by notmore than one month, the said period.
Reference under section 23(1)(c)(ii).
10B. (1) A reference made under section 23(1)( c)(ii) shall include—
(a) the date of filing of the earlier relevant application,
(b) its application number, and
(c) the state in or for which it was made.
(2) Subject to paragraph (3), the copy of the application provided
under section 23(9)( c)(ii) (inserted by section 6 of the Patents
(Amendment) Act 2006) shall—
(a) be duly certified by the authority with which it was filed, and
(b) where it is in a language other than Irish or English, be
accompanied by—
(i) a translation into Irish or English of that application, or
(ii) a declaration that the description filed under subpara-
graph (i) of section 23(9)( c) is a complete and accurate
translation into Irish or English of the description con-tained in the application provided under subparagraph(ii) of that provision.
(3) Where the application or a copy of the application is kept at the
Office it shall, for the purposes of section 23(9)( c)(ii), be treated as
having been filed in accordance with these Rules.
(4) Subject to paragraph (5), the prescribed period for the purpose
of section 23(9)( c)(i) and (ii) is 4 months starting on the date of filing
of the application.
(5) Where a divisional application is filed or a new application is
filed under section 81 after the end of the period prescribed in para-graph (4), the period prescribed for the purposes of section 23(9)( c)(i)[194] 5
and (ii) shall be two months from the date of filing of the divisional or
new application, as the case may be.”,
(e) by substituting the following for Rule 14:
“Requirements relating to biological material.
14. (1) The specification of an application for a patent, or of a pat-
ent, for an invention which involves the use of or concerns biologicalmaterial—
(a) which is not available to the public at the date of filing of
the application, and
(b) which cannot be described in the specification in such a man-
ner as to enable the invention to be performed by a personskilled in the art,
shall, in relation to the biological material itself, be treated for the
purposes of the Act as disclosing the invention in such a manner onlyif one of the conditions set out in paragraph (2)(and, where applicable,the further condition where paragraph (17) applies) is or are satisfiedand the application as filed contains such relevant information as isavailable to the applicant on the characteristics of the biologicalmaterial.
(2) The conditions referred to in paragraph (1) are—
(a) a condition that—
(i) not later than the actual filing date of the application, a
sample (in this Rule referred to as the “deposit”) of thebiological material concerned has been deposited in adepositary institution which is able to furnish a sample(in this Rule referred to as the “sample”) of the saidbiological material,
(ii) the name of the depositary institution and the accession
number of the deposit are given in the specification ofthe application, and
(iii) where the deposit has been deposited by a person other
than the applicant, the name and address of the deposi-tor are stated in the application and a document is filedsatisfying the Controller that the depositor has author-
ised the applicant to refer to the deposit in the appli-cation and has given his, her, their or its unreserved andirrevocable consent to the deposit being made availableto the public in accordance with these Rules,
and6[194]
(b) a condition, in the case of a European patent designating the
State or an application for a European patent designatingthe State which is treated, by virtue of sections 119 and 122as, respectively, a patent or an application for a patent underthe Act, that the corresponding provisions of the Imple-menting Regulations have been complied with,
and where paragraph (17) applies, a further condition that the appli-
cant or proprietor has made a new deposit in accordance with thatparagraph.
(3) Where, except in the case of a divisional application, the infor-
mation specified in paragraph (2)( a)(ii) or (iii) is not contained in an
application for a patent as filed, it shall be added to the application—
(a) before the end of the sixteenth month after the date of
priority or, if no priority has been claimed, the date of filingof the application,
(b) where, on a request made by the applicant, the Controller
publishes the application before the end of the period speci-fied in section 28(1), before the date of the request,
whichever is the earliest.
(4) The giving of the information specified in paragraph (2)( a)(ii)
shall constitute the unreserved and irrevocable consent of the applicantto the depositary institution with which the deposit (including a depositwhich is to be treated as having always been available by virtue ofparagraph (17)) is from time to time deposited to the making availableof a sample, on receipt of the Controller's certificate authorising therelease, to the person who is named therein as a person to whom asample may be made available and who makes a valid request thereforto the institution.
(5) The specification of an application for a patent described in
paragraph (1) shall mention any international agreement under which
the deposit concerned is deposited.
(6) Save where paragraphs (13) to (16) have effect, a request may
(notwithstanding the revocation or cancellation of the relevant patentor the relevant application for a patent) be made to the Controller toissue a certificate authorising a depository institution to make availablea sample at any time after publication of an application for a patent toany person. The request shall be made in Form No. 6 (which shall befiled in duplicate together, in the case of a sample which is depositedunder the Budapest Treaty with an international depositary authority,with the form provided for by the Regulations under the BudapestTreaty). The request shall be accompanied by the prescribed fee.[194] 7
(7) The Controller shall send copies of the forms lodged with him
or her under paragraph (6) and of his or her certificate authorising therelease of the sample—
(a) to the applicant for, or proprietor of, the patent,
(b) to the depositary institution, and
(c) to the person making the request.
(8) A request under paragraph (6) shall include, on the part of the
person to whom the request relates, undertakings for the benefit ofthe applicant for, or proprietor of, the patent—
(a) not to make the deposit, or any material derived from it,
available to any other person, and
(b) not to use the deposit, or any material derived from it, other-
wise than for experimental purposes relating to the subjectmatter of the invention.
In this paragraph, references to material derived from a deposit are
references to material so derived which exhibits those characteristicsof the deposit essential for the performance of the invention.
(9) Subject as provided by this paragraph, both undertakings
referred to in paragraph (8) shall have effect—
(a) during any period before the application for a patent has
been withdrawn, is deemed to be withdrawn, or is the sub-ject of a final refusal, but excluding, if an application is
reinstated, the period before it is reinstated, and
(b) if a patent is granted on the application, during any period
for which the patent is in force and during the period of sixmonths referred to in section 36(3).
(10) For the purpose of enabling any act specified in section 77 to
be done in relation to the deposit for the service of the State, theundertakings specified in paragraph (8)—
(a) shall not be required from any Minister of the Government,
whether by him or her self or by such of his or her officers,servants or agents as may be authorised in writing by himor her or any other person acting on his or her behalf forthe purposes of this paragraph, and
(b) shall not have effect in relation to any such person who has
already given them.8[194]
(11) An undertaking given pursuant to paragraph (8) may be varied
by way of derogation by agreement between the applicant or pro-prietor and the person by whom it is given.
(12) Where, in respect of a patent to which an undertaking pursuant
to paragraph (8) has effect—
(a) an entry is made in the register under section 68 to the effect
that licences are to be available as of right, or
(b) a compulsory licence is granted under section 70,
that undertaking shall not have effect to the extent necessary for effect
to be given to any such licence.
(13) Where, before the preparations for publication of an appli-
cation for a patent under section 28 have been completed, the applicantgives notice to the Controller on Form No. 7 of his, her, their or itsintention that a sample should be made available only to an expert,the provisions of paragraphs (14) to (16) shall have effect.
(14) The following may be nominated as an expert for the purposes
of this Rule—
(a) any natural person, provided that any person wishing to have
a sample made available furnishes evidence, when applyingunder paragraph (16), that the person nominated has theapproval of the applicant for the patent, or
(b) any natural person recognised as an expert by the President
of the European Patent Office.
(15) The Controller—
(a) shall publish with the application notice that the provisions
of paragraphs (14) to (16) have effect, and
(b) notwithstanding paragraphs (6) to (8) shall not—
(i) until the patent is granted, or
(ii) where the application has been withdrawn, is deemed to
be withdrawn, or is the subject of a final refusal, for 20years from the date on which the application was filed,
issue any certificate authorising release of a sample otherwise than
under paragraphs (14) to (16).
(16) ( a) Any person wishing to have a sample made available (“the
requester”) shall apply to the Controller in Form No. 8(which shall be filed in duplicate together, in the case of adeposit which is deposited under the Budapest Treaty with[194] 9
an international depositary authority, with the form pro-
vided for by the Regulations under the Budapest Treaty)nominating the person (“the expert”) to whom he, she, theyor it wishes the sample to be made available. The requestershall at the same time file undertakings by the expert in theterms set out in paragraph (8) and shall pay the prescribedfee.
(b) The Controller shall send a copy of any form lodged with
him or her under this paragraph and his or her certificateauthorising the release of the sample—
(i) to the applicant for the patent,
(ii) to the depositary institution concerned,
(iii) to the requester, and(iv) to the expert.
(17) ( a) This paragraph applies where—
(i) a deposit ceases to be available from the institution with
which it was deposited because—
(I) the biological material comprising the deposit is no
longer viable, or
(II) for any other reason the institution is unable to sup-
ply samples,
or
(ii) the depositary institution—
(I) ceases to be a depositary institution for the purposes
of this Rule, either entirely or for the kind of bio-logical material to which the deposit belongs, or
(II) discontinues, temporarily or permanently, the per-
formance of its functions as regards deposited bio-logical material,
and no sample of the biological material has been trans-
ferred to another depositary institution, from which it con-tinues to be available.
(b) An interruption in availability of the deposit shall be deemed
not to have occurred if within a period of three months fromthe date on which the depositor was notified of the interrup-tion by the depositary institution—10[194]
(i) the depositor (or applicant or proprietor if different)
makes a new deposit of a sample of that biologicalmaterial, and
(ii) the applicant or proprietor makes a request for amend-
ment of the specification under section 32 or section 38,as the case may be, so as to indicate the accessionnumber of the new deposit and, where applicable, thename of the depositary institution with which thedeposit was made.
(c) In the case provided for in subparagraph ( a)(i)(I), the new
deposit shall be made with the depositary institution withwhich the original deposit was made; in the cases providedfor in subparagraphs ( a)(i)(II) and ( a)(ii), it may be made
with another depositary institution.
(d) Where, in a case to which subparagraph ( a)(ii) applies, no
notification of the interruption of availability of the depositfrom the depositary institution is received by the depositorwithin six months from the date of such event, the three-month period referred to in subparagraph ( b) shall begin on
the date on which this event is announced in the Journal.
(e) Any new deposit shall be accompanied by a statement signed
by the person making the deposit certifying that the sampleof biological material newly deposited is of the same biologi-cal material as was the sample originally deposited.
(18) In this Rule—
“Budapest Treaty” means the Treaty on the International Recognition
of the Deposit of Microorganisms for the purposes of Patent Proceduredone at Budapest in 1977, and
“international depositary authority” means a depositary institution
which has acquired the status of an international depositary authorityas provided for in Article 7 of the Budapest Treaty.
(19) For the purposes of this Rule a “depositary institution” is an
institution which, at all relevant times—
(a) carries out the functions of receiving, accepting and storing
biological material and the furnishing of samples thereof,and
(b) conducts its affairs in so far as they relate to the carrying out
of those functions in an objective and impartial manner.”,[194] 11
(f) in Rule 15—
(i) by substituting the following for paragraph (1):
“(1) The specification, drawings and abstract making up a
patent application under section 18 shall be filed in duplicate.”,
and
(ii) by substituting the following for paragraph (9):
“(9) The lines of each sheet of the description and of the
claims shall be—
(a) numbered in sets of five, the numbers appearing on
the left side, to the right of the margin, or
(b) separated into consecutive paragraphs, the paragraph
number appearing on the left side, to the right ofthe margin.”,
(g) by substituting the following for Rule 18:
“Prescribed period in relation to late or non-filing of drawings.
18. The period prescribed for the purposes of section 23(6) and (7)
shall be two months, calculated from the date on which the Officesends out notification to the applicant that the drawing or part of adescription has been filed, later than the date which is, by virtue ofsection 23(1), to be treated as the date of filing of the application or,as the case may be, that it has not been filed.”,
(h) by substituting the following for Rule 19:
“Prescribed period for filing claims and abstract.
19. (1) The period prescribed for filing the claims and abstract for
the purposes of section 23(9) shall be twelve months from the date offiling or, if priority has been claimed, from the date of priority.
(2) Where a divisional application is filed more than nine months
after the date of filing of the earlier application or, if priority has beenclaimed after the date of priority of the earlier application, the periodprescribed for filing the claims and abstract for the purposes of section23(9) shall be three months from the date of filing of the divisionalapplication.
(3) Where a new application is filed under section 81 after the end
of the period of 12 months prescribed in paragraph (1), the require-ments of that provision shall be complied with at the actual filing dateof the new application.”,12[194]
(i) by inserting the following Rule after Rule 19:
“Prescribed requirements for a request under section 23(8)(b).
19A. (1) A request made under section 23(8)( b) shall—
(a) include sufficient information to identify where in the earlier
relevant application or applications the missing part of thedescription or missing drawing filed under section 23(6) or(7), as the case may be, was included, and
(b) be made before the end of the period prescribed for the
purpose of section 23(6) or (7), as the case may be.
(2) Any request under section 23(8)( b) shall be considered never to
have been made where—
(a) the earlier relevant application or applications do not contain
every missing part filed under section 23(6) or (7), as thecase may be, or
(b) the applicant fails to furnish to the Office copies of all earlier
relevant applications, duly certified by the authority withwhich they were filed, before the end of the relevant period.
(3) Paragraph (2)( b) does not apply in respect of an earlier relevant
application where that application or a copy of the application is keptat the Office.
(4) In this Rule the relevant period means—
(a) the period of sixteen months starting on the declared priority
date, or
(b) the period of four months starting on the date the request
was made under section 23(8),
whichever first expires.
(5) This Rule applies only to applications filed after the date of the
making of these Rules. Rule 19 will continue to apply to applicationsreceived prior to that date.”,
(j) in Rule 20(1), by substituting “has paid” for “has been requested to
pay”,
(k) by substituting the following for Rule 22:
“Declaration of priority and priority documents.
22. (1) The declaration of priority based on a previous application
referred to in section 26(1) shall be made on Form No. 1 and shallindicate the date of the previous filing, the state in or for which it wasmade and the file number, if available.[194] 13
(2) The declaration of priority may be made subsequently provided
it is made within sixteen months from the earliest priority date claimed.
(3) The applicant may correct the declaration of priority within six-
teen months from the earliest priority date claimed, or, where the cor-rection would cause a change in the earliest priority date claimed,within sixteen months from the corrected earliest priority date, which-ever sixteen month period expires first, provided that such a correctionmay be submitted not later than four months from the date of filing.
(4) The applicant may not, however, request the addition or correc-
tion of a priority claim where the applicant has made a request undersection 28(1) for early publication, unless that request for early publi-cation is withdrawn before the technical preparations for publicationof the application have been completed.
(5) A copy of the previous application as referred to in section 26(1)
shall be filed before the end of the sixteenth month after the date ofpriority; provided that this period may be extended by the Controllerif, upon request made to him or her within one month after the expiryof the said period, accompanied by the prescribed fee, he or she thinksfit. The said copy must be certified as an exact copy of the previousapplication (by the authority which received the previous application)or otherwise verified to the satisfaction of the Controller, and shall beaccompanied by a certificate issued by that authority stating the dateof filing of the previous application.
(6) A translation of the previous application as required under
section 26(1) may only be requested where such translation would berelevant to the determination of the validity of the patent where rel-evant prior art has been published between the priority date and thefiling date.
(7) Where a translation is requested in accordance with paragraph
(6) it must be filed within twenty one months after the date of priority.
(8) Where the previous application is an application under the Act
or an international application for a patent designating the State whichis filed at the Office, the applicant may, instead of filing a copy of theprevious application, request the Controller, before the end of theperiod referred to in paragraph (6), to include such a copy with thepatent application upon payment of the prescribed fee.
(9) Where a divisional application or a new application under
section 81 is filed after the period of sixteen months referred to inparagraph (5), the requirements of paragraph (5) shall be compliedwith at the actual filing date of the divisional or new application, asthe case may be, and where such an application is filed after the periodreferred to in paragraph (6), the provisions of that latter paragraphshall apply at the actual filing date of the application in question.14[194]
(10) In the case of an application which is an application for a Euro-
pean patent designating the State which, by virtue of section 122 is tobe treated as an application for a patent under the Act, the require-ments of paragraphs (1) to (8) shall be treated as having been compliedwith to the extent that the requirements of Rule 52(1) to (4) and Rule53(1) and (3) of the Implementing Regulations have been fulfilled.”,
(l) in Rule 24—
(i) by inserting after paragraph (3) the following paragraph:
“(3A) The prescribed period for section 29(3) is as follows:
(a) Two months from the date of issue of the search
report to the applicant, in cases where the applicationhas been published under section 28 or is due to beso published within two months.
(b) Eighteen months from the date of filing or, where
priority has been claimed, from the date of priority,in cases where the application is not one to whichsubparagraph ( a) applies.”,
and
(ii) by inserting after paragraph (5) the following paragraph:
“(6) The time period prescribed in paragraph (1) may be
extended by the Controller by not more than three months ifan application for the extension required (accompanied by theprescribed fee) is submitted to the Controller at any time withinthe extended period specified in the request.”,
(m) by substituting the following for Rule 26:
“Prescribed foreign states etc.
26. (1) The following foreign states are prescribed for the purpose
of the statement referred to in section 30(1): the United Kingdom,Germany and any other state where a search for the application relat-ing to the same invention has been carried out by the European Pat-ent Office.
(2) The European Patent Convention and the Patent Cooperation
Treaty are prescribed for the purpose of the statement referred to insection 30(1).”,
(n) in Rule 33(4), by substituting “within three months of the date of
filing of the divisional application.” for “at the time such applicationis filed.”,[194] 15
(o) by inserting the following Rules after Rule 33:
“Application for Reinstatement.
33A. (1) The time limit for making a request under section 35A for
reinstatement shall be the earlier to expire of the following periods:
(a) two months from the date on which the removal of the cause
of non-compliance occurred, or
(b) twelve months starting from the date the application was
terminated.
(2) The request for reinstatement shall state—
(a) the name and address of the applicant for reinstatement and
the number of the patent application in question, and
(b) the circumstances which led to the failure to comply with the
time limit,
and shall be accompanied by the prescribed fee and by evidence ver-
ifying any statement made in relation to the circumstances mentionedin subparagraph ( b).
(3) Where upon consideration of the evidence provided under para-
graph (2) it does not appear to the Controller that a case for areinstatement order has been made, he or she shall notify the applicantaccordingly and unless within one month the applicant requests to beheard in the matter the Controller shall refuse the application.
(4) If the applicant requests a hearing within the time allowed, the
Controller, after giving the applicant the opportunity to be heard, shalldetermine whether the request for reinstatement may proceed toadvertisement in accordance with section 35A(5) or whether it shall berefused. If the application has not been published under section 28, theController shall determine whether the request for reinstatementshould be allowed or refused.
Opposition to reinstatement of application.
33B. (1) At any time within 2 months of the advertisement of the
application under section 35A(5), any person may give notice of oppo-sition to the application.
(2) Such notice shall be furnished in duplicate and shall state—
(a) the name and address of the opponent,
(b) the number of the application concerned, and16[194]
(c) the ground or grounds upon which reinstatement is opposed,
and shall be accompanied by the prescribed fee and a statement setting
out fully the facts on which the opponent relies.
(3) Upon notice of opposition being given to him or her, the Con-
troller shall send to the opponent a copy of the application and theaccompanying evidence submitted to him or her.
(4) A copy of the notice of opposition and the statement of the
opponent shall also be sent by the Controller to the applicant.
(5) Within three months of the receipt of such copies, the applicant
shall, if he, she, they or it wishes to continue with the application forreinstatement, file a counter-statement in duplicate setting out fullythe grounds upon which the opposition is resisted, and the Controllershall send a copy of the counter-statement to the opponent.
(6) The Controller may give such directions as he or she thinks fit
with regard to the subsequent procedure.
(7) Where the Controller reinstates the application after a notice
was published under section 35A(5) he or she shall advertise in theJournal that he or she has reinstated the application.”,
(p) by substituting the following for Rule 57:
“Change of name etc. in register.
57. (1) A request for the alteration of a name or nationality or an
address or an address for service in an application for the grant of apatent or in the register shall state—
(a) the name and address of the person making the request,
(b) the number of the patent or application in question, and
(c) particulars of the alteration desired,
and be accompanied by the prescribed fee.
(2) If the Controller is not satisfied that a request to alter a name
or nationality may be allowed, he or she may require the submissionof evidence in support of the request.
(3) If the Controller is satisfied that a request to alter a name or
nationality or address or address for service may be allowed, he or sheshall cause the register or application to be altered accordingly.”,[194] 17
(q) by substituting the following for Rules 77 and 78:
“Days and hours of business.
77. (1) The Controller may, by notice published in the Journal, give
directions specifying the days and hours of business of the Office forthe transaction by the public of business under the Act or under anyother Act for the administration of which the Controller is responsible.
(2) Notifications of changes in days and hours of business and of
days on which the Office is not open shall be advertised in the Journal.
Excluded days.
78. (1) Whenever the last day fixed by the Act, or by these Rules,
for doing any act or thing at the Office falls on any of the days onwhich the Office is not open (which days shall be excluded days forthe purposes of the Act and these Rules), it shall be lawful to do anysuch act or thing on the first day which is not an excluded day nextfollowing such excluded day, or days, if two or more of them occur con-secutively.
(2) Where the time for delivering any application, notice or docu-
ment which the Controller has directed may be delivered in electronicform and by electronic means, expires on an excluded day, that timeshall be extended to the next following day which is not an excludedday.
(3) Where an application, notice or document which the Controller
has directed may be delivered in electronic form and by electronicmeans is received by the Office at any time before midnight on anyday which is not an excluded day, that application, notice or documentshall be treated as having been received by the Controller at that timeand on that day.”,
(r) by inserting the following Rule after Rule 82:
“Opposition to a request to correct an error in a withdrawal of an
application.
82A. (1) At any time within two months of the publication of a
request under section 110(2A) any person may give notice of oppo-sition to the request.
(2) Such notice shall be furnished in duplicate and shall state—
(a) the name and address of the opponent,
(b) the number of the application concerned,
(c) the ground or grounds upon which restoration of the appli-
cation is opposed,18[194]
and shall be accompanied by the prescribed fee and by a statement in
duplicate setting out fully the facts upon which the opponent relies.
(3) Copies of the notice and the statement of the opponent shall be
sent by the Controller to the person making the request.
(4) Within three months of the receipt of such copies, if the person
making the request wishes to proceed with same, he, she, they or itshall file a counter-statement in duplicate setting out fully the groundsupon which the opposition is resisted, and the Controller shall send acopy of the counter-statement to the opponent.
(5) The Controller may give such directions as he or she thinks fit
with regard to the subsequent procedure.”,
(s) by inserting the following Rules after Rule 83:
“Restoration where translation not filed under section 119(6).
83A. (1) The time limit for making a request under section 119A to
restore the effect of section 119(1) shall be the date falling—
(a) two months from the date of the removal of the cause of
non-compliance, or
(b) twelve months from the expiration of the period prescribed
for the purpose of section 119(6),
whichever is the earliest.
(2) The request to restore the effect of section 119(1) shall contain:
(a) the name and address of the applicant for restoration and
the number of the patent in question,
(b) the circumstances which led to the failure to comply with the
time limit under section 119(6),
(c) the translation as required under section 119(6) and the pre-
scribed fee,
and shall be accompanied by the prescribed application fee and by
evidence verifying any statement made in relation to the circumstancesmentioned in subparagraph ( b).
(3) Where, upon consideration of the evidence provided under para-
graph (2), the Controller is not satisfied that the case for a restorationorder has been made, he or she shall notify the applicant accordingly,and unless within one month the applicant requests to be heard in thematter the Controller shall refuse the application.[194] 19
Opposition to restoration where translation not filed under section
119(6).
83B. (1) At any time within 2 months of the advertisement of the
application for restoration under section 119A(5) any person may givenotice of opposition thereto.
(2) Such notice shall be furnished in duplicate and shall state—
(a) the name and address of the opponent,
(b) the number of the patent concerned, and
(c) the ground or grounds upon which the application for resto-
ration is opposed,
and shall be accompanied by the prescribed fee and by a statement in
duplicate setting out fully the facts upon which the opponent relies.
(3) Upon notice of opposition being given the Controller shall send
to the opponent a copy of the said application and accompanyingevidence.
(4) A copy of the notice and the statement of the opponent shall be
sent by the Controller to the applicant for restoration.
(5) Within three months of the receipt of such copies, the said appli-
cant shall, if he, she, they or it wishes to proceed with the application,file a counter-statement in duplicate setting out fully the grounds uponwhich the opposition is resisted, and the Controller shall send a copyof the counter-statement to the opponent.
(6) The Controller may give such directions as he or she thinks fit
with regard to the subsequent procedure.”,
(t) by substituting the following for Rule 87(5):
“(5) In the event of failure to comply with the provisions of para-
graphs (3) and (4), a late payment fee, calculated in accordance withthe provisions of Rule 16. bis of the Regulations under the PatentCooperation Treaty, shall be made to the Office in the currency of theState. The fee shall be calculated as follows:
(i) 50% of the amount of unpaid fees which is specified in
the invitation, or,
(ii) if the amount calculated under item (i) is less than the
transmittal fee, an amount equal to the transmittal fee.
The amount of the late payment fee shall not, however, exceed the
amount of the international filing fee referred to in item 1 of the Sched-ule of Fees of the Regulations under the Patent Cooperation Treaty.”,20[194]
(u) by inserting the following Rule after Rule 94:
“Furnishing of documents.
94A. (1) Any application, notice or other document authorised or
required under the Act or these Rules to be delivered to the Controlleror any other person may be sent by post or by other means subject tosuch terms or conditions as may be specified by the Controller andpublished in the Journal.
(2) For the purposes of paragraph (1) the Controller may issue
directions specifying—
(a) the forms and documents that are to be filed or submitted
using electronic means,
(b) the manner in which any such form or document is to be
filed or submitted.
(3) Where the Controller has specified that an application, notice or
document may be delivered in electronic form, any requirement inthese Rules for duplicate copies to be filed shall not apply.
(4) Where the Controller is required or authorised under the Act or
Rules to—
(a) send or give any notice or other document,
(b) give any directions, or
(c) furnish any information,
he or she may, notwithstanding any provision in these Rules to the
contrary, do so by means other than by post.”,
(v) by substituting the following for Rule 95(1):
“(1) Where a document in a foreign language is filed in connection
with any proceedings under the Act or these Rules, it shall, unlessotherwise provided, be accompanied by a translation thereof verifiedto the satisfaction of the Controller. Subject to the provisions of Rule10A, where the document is or forms part of an application for a pat-ent, the Office shall not, in the absence of such a translation, takeany further action in relation to that document, unless the Controllerso directs.”,
(w) by substituting the following for Rule 98(3):
“(3) The Rules referred to in paragraph (1) are Rules 6, 8A, 8B,
10A, 10B(4) and (5), 14(3), 14(9)( b), 14(15)( b)(ii), 14(17)( b) and ( d),
18, 19, 19A, 21, 22(2), (3), (6) and (7), 24(1), (3A), (4) and (6), 28(1),[194] 21
29, 33(4), 33A(1), (2) and (3), 33B, 34, 39(2), 40(3), 48(2), 49(1), 52(1),
82A, 83A, 83B and 86.”,
(x) by substituting the following for Rule 98(5):
“(5) ( a) Where any period of time specified or prescribed in the Act
or these Rules for the giving, making or filing of any notice,application or other document expires on a day certified bythe Controller as being one on which there is an interrup-tion, failure or delay in a communication service, the periodshall be extended to the first day following the end of thesaid period of interruption, failure or delay.
(b) In this rule “communication service” means a service by
which documents may be sent and delivered, and includespost and electronic communications.”,
(y) by inserting the following Rule after Rule 98:
“Extensions of time limits specified by the Controller.
98A. (1) A request for an extension of time under section 118A(1)
shall be accompanied by the prescribed fee and be made before theend of the period prescribed for section 118A(3).
(2) The period prescribed for the purpose of section 118A(3) is two
months from the date of expiry of the relevant time limit mentionedin section 118A(1).”,
(z) by correcting the following typographical errors:
(i) in Rule 64(1)( f), by substituting “lapsed” for “lapsesd”, and
(ii) in Rule 94(1), by substituting “furnished” for “burnished”,
(aa) by repealing Rules 28(3), 38, 93(2) and 99,
(ab) in Schedule I (as amended by the Patents, Trade Marks and Designs
(Fees) Rules 2001 (S.I. No. 482 of 2001))—
(i) by substituting for item nos. 4 and 5 the following:
“
4. On application for extension of time \12.00
of one month for filing copy ofprevious application required forclaiming priority — Rule 22(5).
5. Fee in connection with previous \12.00
application filed at the Office — Rule22(8).
”,22[194]
and
(ii) by inserting the following items at the following item nos.:
“
1A. Additional fee on late filing of a
patent application (Rule 8B) underPart II — section 18(3). \62.50
under Part III — section 63(8). \30.00
13A. On request for reinstatement of a \125.00
patent application (Rule 33A).
13B. On opposition to the reinstatement of \12.00
a patent application (Rule 33B).
44A. On opposition to an application for \12.00
the correction of an error or mistake(Rule 82A).
45A. On application for restoration under \125.00
section 119A (Rule 83A).
45B. On opposition to application for \12.00
restoration (Rule 83B).
52A. On application for an extension of
time under Rule 118A(1), madewithin the period prescribed for thepurpose of section 118A(3); Nilfor each month of extension actuallygranted under either or bothsubsections (3) and (5) of section \30.00
118A.
”,
and
(ac) in Schedule II—
(i) by amending the names of the forms Nos. 6, 7 and 8 to read as
follows:
“Form No. 6 Request for Controller’s Certificate authorising
release of a sample of biological material Rule14(6)
Form No. 7 Notification to Controller that a sample of bio-
logical material may be made available only toan expert Rule 14(13)
Form No. 8 Request for Controller’s Certificate authorising
release of a sample of biological material to anexpert Rule 14(16)”,
and
(ii) by substituting the following forms for those set out:[194] 23
“
FORM PATENTS ACT 1992 (as amended) Reference No. of Applicant or
NO. 1. Authorised Agent......................
REQUEST FOR THE GRANT OF A PATENT
Grant of a Full Term patent (20 year)
Grant of a Short Term patent (10 year)
1. Applicant(s) (Full name and address of each person or company applying)
Name(s)
Address(es)
Nationality(ies)
Telephone(s)
Email(s)
2. Legal Representative
The following is authorised to act as agent in all proceedings connected withthe obtaining of a patent to which this request relates and in relation to anypatent granted:
Name
Address
Telephone
Email
3. Address for Service (within the EU, to which correspondence is to be sent)
If different to address at 1 or 2
Address
Telephone
Email24[194]
4. Title of Invention
5. Declaration of Priority (If you have filed any application(s) for the same
invention within the last 12 months please enter the relevant information wherea right to priority is claimed)
State Date Number
6. Inventor(s)
The applicant(s) is/are the sole/joint inventor(s) YES NO
If no, please specify the full name(s) and address(es) of the inventor(s) below
Name(s)
Address(es)
Telephone(s)
Email(s)
7. Statement of right to be granted a Patent
(To be completed if applicant(s) is/are not the sole inventor(s))Please state how the applicant derived the right from the inventor to be granted
a patent
By Deed of Assignment By Contract of Employment
Other (please specify)
8. Divisional Application(s)
The following information is applicable to the present YES NO
application
Earlier Application No. Filing Date of Earlier Application[194] 25
9. Items accompanying this Request
Filing fee ( \ )
Specification containing a description and claims
Specification containing a description only
Drawings referred to in descriptions or claims
An abstract
Copy of previous application(s) in respect of which priority is claimed
Translation of previous application in respect of which priority is
claimed
Authorisation of agent
General authorisation of agent filed on a previous application
Earlier Application No. Filing Date of Earlier Application
10. Signature
Signature
Name in BLOCK CAPITALS
Capacity in company If a company state the position within the company of the
person signing
Date26[194]
FORM PATENTS ACT 1992 (as amended) Reference No. of Applicant or
NO. 2. Authorised Agent......................
STATEMENT OF INVENTORSHIP AND OF RIGHT TO GRANT OF A
PATENT
1. Application Number
2. Title of Invention
3. Declaration
I/We, the applicant(s), believe the following person(s) to be the inventor(s) of the invention
which the above application relates to:
Name
Address
Telephone
Email
4. Statement of right to be granted a patent
(To be completed if applicant(s) is/are not the sole inventor(s))(State how the applicant derived the right from the inventor to be granted apatent)
By Deed of Assignment By Contract of Employment
Other (please specify)
5. Signature
Signature
Name in BLOCK CAPITALS
Capacity in company If a company state the position within the company of the
person signing
Date[194] 27
FORM NO. 3.
PATENTS ACT 1992 (as amended)
CERTIFICATE OF GRANT OF A PATENT
In accordance with Section 31 of the Patents Act, it is hereby certified that a
patent bearing the specification number ....... has been granted in respect ofan invention under Part .....of the Act, having the following particulars:
Title
Application NumberDate of FilingPriority DateName of Proprietor(s)Address of Proprietor(s)
Date of Grant
Dated this .. day of ... 20...28[194]
FORM PATENTS ACT 1992 (as amended) Reference No. of Applicant or
NO. 4. Authorised Agent......................
PAYMENT OF PATENT RENEWAL FEE
1. Patent Number
2. Proprietor(s)
3. Address(es) For Service
Telephone(s)
Email(s)
4. Fee
Year for which fee paid Amount paid
5. Name & address of person transmitting fee (if different from 2 or 3 above)
Name
Address
Telephone
Email
Signature
Date[194] 29
FORM PATENTS ACT 1992 (as amended) Reference No. of Applicant or
NO. 5. Authorised Agent......................
AUTHORISATION OF PATENT AGENT
I/We
hereby appoint the following to act as my/our agent:
Name
Address
Telephone
Email
In connection with
Signature(s)
Name(s) in
BLOCK CAPITALS
Capacity If a company state the position within the company of the
in company person signing
Date30[194]
FORM PATENTS ACT 1992 (as amended) Reference No. of Applicant or
NO. 6. Authorised Agent......................
REQUEST FOR CONTROLLER'S CERTIFICATE AUTHORISING THE
RELEASE OF A SAMPLE OF BIOLOGICAL MATERIAL
1. Person(s) making the request (Full name and address of each person or com-
pany applying)
Name(s)
Address(es)
Telephone(s)
Email(s)
Capacity(ies)
2. Application or Patent Number
3. Applicant or Proprietor(s) (Full name and address(es) of the applicant(s)/
proprietor(s))
Name(s)
Address(es)
Telephone(s)
Email(s)
4. Depository institution in which the biological material is deposited
Name
Address
Telephone
Email
5. Accession Number of the deposit[194] 31
6. Declaration and undertaking
I/We, the person(s) making this request, declare that the invention disclosed in the
specification of the application/patent referred to at 2 above requires for its performance theuse of a biological material to which the information at 4 and 5 above relates. If a sample ofthe biological material is made available, I/We undertake, for the benefit of theapplicant(s)/proprietor(s), not to make the sample or any sample derived from it available toany other person and not to use the sample or sample derived from it other than forexperimental purposes relating to the subject matter of the invention.
I/We accordingly request that a certificate of the Controller authorising the release of a
sample of the biological material be sent to me/us.
Signature(s)
Name(s) inBLOCK CAPITALS
Date32[194]
FORM PATENTS ACT 1992 (as amended) Reference No. of Applicant or
NO. 7. Authorised Agent......................
NOTIFICATION TO CONTROLLER THAT A SAMPLE OF A
BIOLOGICAL MATERIAL MAY BE MADE AVAILABLE ONLY TO
AN EXPERT
1. Application Number
2. Depository institution in which the biological material is deposited
Name
Address
Telephone
Email
3. Accession Number of the deposit
4. Declaration and undertaking
I/We, applicant(s) in the above numbered application, give notice of intention that samples of
the biological material identified hereunder are to be available only to experts in accordancewith the provisions of Rule 14 of the Patents Rules 1992.
Signature(s)
Name(s) inBLOCK CAPITALS
Date[194] 33
FORM PATENTS ACT 1992 (as amended) Reference No. of Applicant or
NO. 8. Authorised Agent......................
REQUEST FOR CONTROLLER'S CERTIFICATE AUTHORISING THE
RELEASE OF A SAMPLE OF BIOLOGICAL MATERIAL TO AN
EXPERT
1. Person(s) making the request (Full name and address of each person or com-
pany applying)
Name(s)
Address(es)
Telephone(s)
Email(s)
Capacity(ies)
2. Application Number
3. Applicant(s) (Full name(s) and address(es))
Name(s)
Address(es)
Telephone(s)
Email(s)
4. Depository institution in which the biological material is deposited
Name
Address
Telephone
Email
5. Accession Number of the deposit34[194]
6. Expert Nominated:
Name
Capacity
Address
Telephone
Email
7. Undertaking by Expert
I verify that I am the person nominated at 6 and hereby undertake, for the benefit of the
applicant(s), if a sample of the biological material is made available to me
— not to make the sample, or any sample derived from it, available to the person making this
request or any other person
— not to use the sample or any sample derived from it other than for experimental purposes
relating to the subject matter of the invention.
Signature
Name inBLOCK CAPITALS
Date
8. Declaration
I/We, the person(s) making this request, declare that the invention disclosed in thespecification of the application referred to at 2 above requires for its performance the use ofbiological material to which the information at 4 and 5 above relates.I/We accordingly request that a certificate of the Controller authorising the release of asample of the biological material be sent to the person nominated at 6.
Signature(s)
Name(s) inBLOCK CAPITALS
Date
”.[194] 35
The Minister for Finance consents to the making of the foregoing Rules.
GIVEN under my Official Seal,
21st May 2009
BRIAN LENIHAN,
Minister for Finance.
GIVEN under my Official Seal,
21st May 2009
MARY COUGHLAN.
Minister for Enterprise, Trade and Employment.36[194]
EXPLANATORY NOTE
(This note is not part of the Instrument and does not purport to be a legal
interpretation.)
These amendments to the Patent Rules 1992 arise from changes to primary
legislation mainly related to the enactment of the Patents (Amendment) Act,2006 along with some rules allowing for procedural changes. Certain ruleamendments are necessary to allow for the commencement of some sections ofthe Patents (Amendment) Act 2006, in particular, the provisions relating to thePatent Law Treaty.
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Wt. (B26799). 305. 5/09. Cahill. Gr. 30-15.