S T A T U T O R Y  I N S T R U M E N T S  
2016 No. 892 
PATENTS 
The Patents (Amendment) (No. 2) Rules 2016 
Made - - - - 5th September 2016 
Laid before Parliament 8th September 2016 
Coming into force 
for the purposes of rules 3(b), 9 and 
17 6th April 2017 
for all other purposes 1st October 2016 
The Secretary of State makes the following Rules in  exercise of the powers conferred by sections 
19(1), 32(2) and 123 of the Patents Act 1977( a). 
Citation and commencement 
1. —(1) These Rules may be cited as the Patents (Amend ment) (No. 2) Rules 2016. 
(2)  This rule and rules 2, 3(a), 3(c) to 8, 10 to 16 an d 18 come into force on 1st October 2016 
and rules 3(b), 9 and 17 come into force on 6th Apr il 2017. 
Amendments to the Patents Rules 2007 
2.  The Patents Rules 2007( b) are amended as follows. 
Applications for the grant of patents under section s 14 and 15 
3.  In rule 12— 
(a)  in paragraph (4)(c) after “drawing” insert “or phot ograph”, 
(b)  after paragraph (6) insert— 
“(6A) The claim or claims must not rely in respect of the technical features of the 
invention on references to the description or any d rawing or photograph unless the feature 
cannot otherwise be clearly and concisely defined i n words, by a mathematical or chemical 
formula or by any other written means.”; and 
(c)  in paragraph (7) after the first reference to “draw ings” insert “or photographs” and after 
the second reference insert “and photographs”. 
                                                                                                                                            
(a) 1977 c.37; see section 123(1) for the definitions  of “prescribed” and “rules”; section 32 was substi tuted by the Patents, 
Designs and Marks Act 1986 (c.39), Schedule 1, para graph 4 and amended by section 13(3) of the Patents  Act 2004 (c.16) 
(there are other amendments to section 32 but none is relevant), section 123 was amended by the Copyri ght, Designs and 
Patents Act 1988 (c.48), Schedule 5, paragraph 29. There are other amendments to section 123 which are  not relevant to 
these Rules. 
(b) S.I. 2007/3291; amended by S.I. 2011/2052, S.I. 2 014/578 and S.I. 2014/2401; there are other amendin g instruments but 
none is relevant.  2Size and presentation of application 
4.  In rule 14— 
(a)  in paragraphs (1), (2) and (4) after “drawings” ins ert “and photographs”, and 
(b)  in paragraph (3) after “drawing” insert “and a phot ograph”. 
The abstract 
5.  In rule 15, in paragraphs (4), (5) and (6), after “drawing” in each place where it occurs insert 
“or photograph”. 
New applications 
6.  For rule 19, substitute— 
“New applications filed as mentioned in section 15(9 ) 
19.—(1) For the purposes of section 15(9)( a) a new application may only be filed in 
accordance with this rule. 
(2) A new application may be filed as mentioned in section 15(9) if— 
(a) the earlier application( b) has not been terminated or withdrawn; and 
(b) the period ending three months before the compl iance date( c) of the earlier 
application has not expired. 
(3) A new application must include a statement that  it is filed as mentioned in section 
15(9).” 
Amendment of application before grant 
7.  At the beginning of rule 31(3) insert “Subject to rule 66A”. 
Reinstatement of applications under section 20A 
8.  In rule 32— 
(a)  for paragraph (2) substitute— 
“(2) For this purpose the relevant period is twelve  months beginning immediately after 
the date on which the application was terminated.”;  and 
(b)  omit paragraph (11). 
Renewal notice 
9.  In rule 39, for paragraph (3)(a) substitute— 
“(a) the last address specified by the proprietor o n payment of a renewal fee (or to 
another address that has since been notified to him  for that purpose by the 
proprietor); or”. 
Correction or change of name or address; correction  of address for service 
10.  In rule 49— 
                                                                                                                                            
(a) Section 15(9) of the Patents Act 1977 was substit uted by S.I. 2004/2357; see rule 2(1) of the Patent s Rules 2007 for the 
meaning of “section”. 
(b) See section 15(9) of the Patents Act 1977 for the  meaning of “earlier application”. 
(c) See rule 2(1) of the Patents Rules 2007 for the m eaning of “compliance date”.  3(a)  for the heading substitute “Correction or change of  name or address; correction of address 
for service”; and 
(b)  for paragraph (6) substitute— 
“(6) For the purposes of this rule a request for a correction includes— 
(a) a correction made for the purposes of section 1 17(a); and 
(b) a change to any of the matters listed in paragr aph (1)(a) or (b) in respect of an 
entry recorded in the register or made to any appli cation or other document filed at 
the Patent Office.” 
Filing of international applications at the Patent Office 
11.  In rule 65— 
(a)  in paragraph (1), for the words from “be filed” to the end, substitute “be filed in English 
or Welsh.”; and 
(b)  omit paragraph (2). 
International applications 
12.  After rule 66 insert— 
“Amendment of international application before grant  
66A. —(1) This rule applies to an international applicat ion for a patent (UK)( b) which has 
begun the national phase of the application( c). 
(2) The period within which an applicant may amend his application under section 19(1) 
is as follows. 
(3) Where during the international phase of the app lication( d), the International Searching 
Authority( e) has sent to the applicant the International Searc h Report( f) relating to the 
invention, the period within which the applicant ma y amend his application is the period 
beginning with the date on which the national phase  of the application begins and ending 
with the date on which the comptroller sends the ap plicant the first substantive examination 
report. 
(4) Where during the international phase of the app lication, the International Searching 
Authority has not sent to the applicant the Interna tional Search Report relating to the 
invention, the period during which the applicant ma y amend his application is the first to 
commence of— 
(a) the period prescribed by rule 31(3); and 
(b) the period beginning with the date on which the  International Searching Authority 
sends the International Search Report to the applic ant and ending with the date on 
which the comptroller sends the applicant the first  substantive examination report.” 
Publication of notices 
13.  For rule 75 substitute— 
                                                                                                                                            
(a) Section 117 of the Patents Act 1977 was amended b y S.I. 2004/2357. 
(b) See section 130(1) of the Patents Act 1977 for th e definition of “international application for a pa tent (UK)”; section 130(1) 
was amended by the Patents Act 2004, Schedule 1, pa ragraphs 1, 9(1) and (2)(a). 
(c) See section 89A(3) of the Patents Act 1977 for th e meaning of when “the national phase of the applic ation begins” (section 
89A was substituted by the Copyright, Designs and P atents Act 1988, Schedule 5, paragraph 25). 
(d) See section 89A(2) of the Patents Act 1977 for th e meaning of “the international phase of the applic ation” (section 89A was 
substituted by the Copyright, Designs and Patents A ct 1988, Schedule 5, paragraph 25). 
(e) See rule 64 of the Patents Rules 2007 for the def inition of “International Searching Authority”. 
(f) See rule 64 of the Patents Rules 2007 for the def inition of “International Search Report”.  4“Publication of notices 
75.—(1) Subject to paragraph (2) and rule 105(5) the c omptroller must advertise in the 
journal( a) any event to which it is possible to object under  any of the provisions mentioned 
in Part 2 or 3 of Schedule 3. 
(2) Where an amendment to the specification of a pa tent is proposed by the proprietor 
under section 75(1)( b) the comptroller may, if he thinks fit, advertise in the journal the 
proposed amendment.”. 
Agents 
14.  In rule 101(1)(b) omit “in duplicate”. 
Requirements of documents contained in an applicati on 
15. —(1) Schedule 2 is amended as follows. 
(2)  In the heading to Part 2 and to Part 3, after “Draw ings” insert “and Photographs” . 
(3)  In Part 3— 
(a)  in paragraphs 11, 18, 19 and 20 after “drawing” ins ert “or photograph”, 
(b)  in paragraphs 12, 13 and 14 after “drawings” insert  “ or photographs”, 
(c)  omit paragraph 15 and substitute— 
“15.  Drawings must comprise black lines and may be shad ed where the shading assists in 
representing the shape of a thing provided that it does not obscure other elements of the 
drawing.”; and 
(d)  after paragraph 20 insert— 
“20A.  Photographs must be black and white, clear and cap able of direct reproduction.”. 
(4)  In Part 4, in paragraph 21 after “drawing” insert “ or photograph”. 
Period for furnishing an address for service 
16.  In Schedule 4— 
(a)  in Part 1, omit the entry in respect of rule 104(2) ; and 
(b)  in Parts 2 and 3, after each entry in respect of ru le 68, insert the following entry— 
“rule 104(2) (period for furnishing an address for service), in relation to an application for a 
patent”. 
Transitional Provision 
17. —(1) The amendment made by rule 3(b) does not apply  to an application for a patent in 
respect of which the compliance period expired befo re 6th April 2017. 
(2)  In paragraph (1) “compliance period” has the same m eaning as it has in rule 2(1) of the 
Patents Rules 2007. 
Review 
18. —(1) The Secretary of State must from time to time—  
(a)  carry out a review of these Rules, 
                                                                                                                                            
(a) See section 130(1) of the Patents Act 1977 for th e definition of “the journal” (there are amendments  to section 130(1) which 
are not relevant to that term). 
(b) Section 75(1) of the Patents Act 1977 was amended  by the Patents Act 2004, Schedule 2, paragraphs 1 and 19.  5(b)  set out the conclusions of the review in a report, and 
(c)  publish the report. 
(2)  The report must in particular— 
(a)  set out the objectives intended to be achieved by t he regulatory system established by 
these Rules, 
(b)  assess the extent to which those objectives are ach ieved, and  
(c)  assess whether those objectives remain appropriate and, if so, the extent to which they 
could be achieved with a system that imposes less r egulation. 
(3)  The first report under this rule must be published before the end of the period of five years 
beginning with the day on which rule 9 comes into f orce. 
(4)  Reports under this rule are afterwards to be publis hed at intervals not exceeding five years. 
 
 
 
 
 Neville-Rolfe  
 Minister of State for Energy and Intellectual Prope rty 
5th September 2016 Department for Business, Energy and Industrial Strategy 
 
 
 
 
 
 
 
EXPLANATORY NOTE 
(This note is not part of the Rules) 
These Rules amend the Patents Rules 2007 (SI 2007/3 291). 
Rule 3 amends rule 12 to permit photographs to be f iled as part of an application for a patent. It 
also limits the use of “omnibus” claims (being clai ms which are drafted in terms of the invention 
“as described in” the description or drawings) to c ases where the features of the invention cannot 
be clearly and concisely defined by other means. 
Rules 4 and 5 amend rules 14 and 15 (which set out the requirements for the documents contained 
in an application for a patent/the abstract) to inc lude references to photographs. 
Rule 6 replaces rule 19 in relation to the deadline  for filing a new application for a patent as 
mentioned in section 15(9) of the Patents Act 1977 (“the Act”) based on an earlier application 
(commonly known as a “divisional application”). New  rule 19 retains the requirement that a 
divisional application may only be made before the earlier application has been granted, 
terminated or withdrawn (see section 15(9) of the A ct and new rule 19(2)(a)).  However, it 
removes the deadline for filing a divisional applic ation based upon whether the earlier application 
has been found to meet the requirements for the gra nt of a patent under section 18 of the Act and 
provides a single deadline of three months before t he compliance date of the earlier application 
(see rule 2(1) of the Patents Rules 2007 for the me aning of “compliance date”). 
Rule 8 amends rule 32 to provide that the period fo r making a request to reinstate an application 
under section 20A of the Act is 12 months beginning  immediately after the date on which the 
application was terminated. 
Rule 9 amends rule 39 to provide that renewal notic es shall be sent to the last address specified by 
the proprietor on payment of a renewal fee unless t he proprietor has subsequently notified an 
address for this purpose.  6Rule 10 amends rule 49 to clarify that a request fo r a correction in relation to a name or address in 
the register or any application or document may be made where there has been any change in 
those matters. 
Rule 11 amends rule 65 to remove the requirement fo r international applications for patents to be 
filed at the Patent Office in triplicate. 
Rule 12 inserts a new rule 66A which regulates the period during which an applicant may amend 
an international application for a patent (UK) file d under the Patent Co-operation Treaty( a) once it 
has begun the national phase of the application. Th e period varies depending upon whether and 
when the International Searching Authority (as defi ned in rule 64 of the Patents Rules 2007) sends 
to the applicant an International Search Report (as  defined in rule 64 of the Patents Rules 2007) 
which the applicant has requested the International  Searching Authority to conduct. 
Rule 13 amends rule 75 to confer a discretion on th e comptroller whether to advertise in the 
journal an amendment to the specification of a pate nt which is proposed by a proprietor under 
section 75 of the Act. 
Rule 14 amends rule 101 to remove the requirement f or the notification of the appointment of an 
agent on Patents Form 51 to be filed in duplicate. 
Rule 15 amends Schedule 2 to apply to photographs t he requirements in Parts 3 and 4 which apply 
to drawings. New paragraph 15 provides that drawing s may be shaded in certain circumstances 
and new paragraph 20A provides that photographs mus t be black and white, clear and capable of 
direct reproduction. 
Rule 16 amends Schedule 4 to enable the comptroller  to extend the period of time permitted for 
furnishing an address for service in relation to an  application for a patent. 
Rule 17 is a transitional provision. The amendment made by rule 3(b) (which limits the use of 
omnibus claims) does not apply to a patent applicat ion whose compliance date (as defined in rule 
2(1) of the Patents Rules 2007) is a date prior to 6th April 2017. 
Rule 18 requires the Secretary of State to review t he operation and effect of these Rules and 
publish a report by 6th April 2022 and within every  five years after that. 
A full impact assessment of the effect that this in strument will have on the costs of business, the 
voluntary sector and the public sector is available  from the Intellectual Property Office, Concept 
House, Cardiff Road, Newport, South Wales, NP10 8QQ  and is available with the Explanatory 
Memorandum alongside this instrument on the Legisla tion UK website at www.legislation.gov.uk. 
  
  
© Crown copyright 2016 
Printed and published in the UK by The Stationery O ffice Limited under the authority and superintenden ce of Carol Tullo, 
Controller of Her Majesty’s Stationery Office and Q ueen’s Printer of Acts of Parliament. 
                                                                                                                                            
(a) The Patent Co-operation Treaty was made in Washin gton on 19th June 1970, amended on 28th September 1 979 and 
modified on 3rd February 1984 and 3rd October 2001 (Treaty Series No. 78 (1978) Cmnd. 7340 as amended)  and is 
available on the WIPO website.     £6.00 
UK2016090727   09/2016   19585 
http://www.legislation.gov.uk/id/uksi/2016/892