UK Statutory Instrument SI 2007 United Kingdom

Patents Rules 2007

Read it on legislation.gov.uk (opens in a new tab)
Enforced by
IPO
Status
Amended (in force with amendments)
Penalty ceiling
Regulated

Does it bind you?

Business-side roles with duties under this instrument.

Any Person6 Applicant3

Plus 38 duties on the regulator, Crown ministers and public bodies — folded into the section list below.

Other Acts binding the same actors

If a role above is yours, these are the other instruments that most often bind it.

Any Person — also bound by 2684 other Acts
Applicant — also bound by 325 other Acts

What it requires

Regulations creating concrete business duties or carrying penalties, grouped as the instrument is structured. Titles link to the source text — blue means you’re leaving for legislation.gov.uk.

Part 1

INTRODUCTORY

0 of 4 sections shown
4 other sections in this Part — procedural and definitional
s.art001 Citation and commencement
s.art002 General interpretation
s.art003 The declared priority date
s.art004 Forms and documents
Part 2

APPLICATIONS FOR PATENTS

8 of 30 sections shown
s.art007 Request to the comptroller for permission to make a late declaration under section 5(2B) Regulated
Other duties (1) — Crown / regulator
  • Comptroller must set deadline for missing late priority declaration evidenceCrown / Minister / Government department
s.art008 Filing of priority documents to support a declaration under section 5(2) Regulated
  • File priority application number and certified copy to support your patent priority claimApplicant
s.art009 Translation of priority documents Regulated
  • File English translation of priority application if IPO directsApplicant
s.art023 Preliminary examination under section 15A Regulated
Other duties (1) — Crown / regulator
  • IPO examiner must carry out preliminary examination and notify the applicantCrown / Minister / Government department
s.art026 Publication of application Regulated
Other duties (1) — Crown / regulator
  • Comptroller must omit inventor details from published patent applicationCrown / Minister / Government department
s.art027 Search under section 17 Regulated
Other duties (1) — Crown / regulator
  • Comptroller must notify applicant if search is limited to first inventionCrown / Minister / Government department
s.art029 Substantive examination reports Regulated
Other duties (1) — Crown / regulator
  • Comptroller must send examiner's substantive examination report to applicantCrown / Minister / Government department
s.art033 Observations by third parties on patentability Regulated
Other duties (1) — Crown / regulator
  • Comptroller must send third-party observations to patent applicant and examinerStatutory regulator
22 other sections in this Part — procedural and definitional
s.art005 International exhibitions
s.art006 Declaration of priority for the purposes of section 5(2) (priority date)
s.art010 Mention of the inventor
s.art011 Waiving the right to be mentioned
s.art012 Applications for the grant of patents under sections 14 and 15
s.art013 Biological material and sequence listings
s.art014 Size and presentation of application
s.art015 The abstract
s.art016 Single inventive concept
s.art017 References under section 15(1)(c)(ii)
s.art018 Missing parts
s.art019 New applications filed as mentioned in section 15(9)
s.art020 New applications under sections 8(3), 12(6) and 37(4)
s.art021 Extensions for new applications
s.art022 Periods prescribed for the purposes of sections 15(10) and 17(1)
s.art024 Correcting a declaration made for the purposes of section 5(2)
s.art025 Formal requirements
s.art028 Request for substantive examination under section 18
s.art030 Period for putting application in order
s.art030 Fee for the grant of a patent under section 18(4)
s.art031 Amendment of application before grant
s.art032 Reinstatement of applications under section 20A
Part 3

GRANTED PATENTS

4 of 11 sections shown
s.art036 Renewal of patents: general Regulated
  • Pay renewal fee and file Patents Form 12 to keep patent in forceAny Person
s.art039 Renewal notice Regulated
Other duties (1) — Crown / regulator
  • Comptroller must send a renewal notice when a patent renewal fee is overdueStatutory regulator
s.art041 Notification of lapsed patent Regulated
Other duties (1) — Crown / regulator
  • Comptroller must notify patent proprietor of lapse within six weeksCrown / Minister / Government department
s.art043 Application for, and cancellation of, an entry that licences are available as of right Regulated
Other duties (1) — Crown / regulator
  • Comptroller must advertise licence-as-of-right entries in the journalStatutory regulator
7 other sections in this Part — procedural and definitional
s.art034 Certificate of grant
s.art035 Amendment of specification after grant
s.art037 Renewal of patents: first renewal
s.art038 Renewal of patents: subsequent renewals
s.art040 Restoration of lapsed patents under section 28
s.art041 Payment of fees under section 77(5A) following restoration of a European patent (UK)
s.art042 Surrender
Part 4

THE REGISTER AND OTHER INFORMATION

5 of 12 sections shown
s.art044 Entries in the register Regulated
Other duties (1) — Crown / regulator
  • Comptroller must maintain the patent registerCrown / Minister / Government department
s.art049 Correction or change of name or address; correction of address for service Regulated
Other duties (1) — Crown / regulator
  • IPO must correct name/address entries or explain doubts when askedStatutory regulator
s.art052 Request for information where section 118(4) applies Regulated
Other duties (1) — Crown / regulator
  • Comptroller must notify patent applicant of information requestsCrown / Minister / Government department
s.art053 Confidential documents Regulated
Other duties (1) — Crown / regulator
  • Comptroller must process confidentiality requests for filed documentsCrown / Minister / Government department
s.art054 Requests for certain information Regulated
Other duties (1) — Crown / regulator
  • Comptroller must notify requesters when a relevant patent event occursCrown / Minister / Government department
7 other sections in this Part — procedural and definitional
s.art045 Advertisement in relation to register
s.art046 Copies of entries in, or extracts from, the register and certified facts
s.art047 Registrations of transactions, instruments and events
s.art048 Copies of documents
s.art050 Request for correction of error
s.art051 Restrictions on inspection of documents
s.art055 Bibliographic information about an unpublished application
Part 5

EUROPEAN PATENTS (UK)

1 of 8 sections shown
s.art059 Procedure for making a conversion request under section 81(2)(b)(ii) Regulated
Other duties (1) — Crown / regulator
  • Comptroller must notify applicant when conversion request receivedCrown / Minister / Government department
7 other sections in this Part — procedural and definitional
s.art056 Translations of European patents (UK)
s.art057 Corrected translations
s.art058 Procedure for making a conversion request under section 81(2)(b)(i)
s.art060 Request for substantive examination following a direction under section 81
s.art061 Recognition of patent decision of competent authorities of other states
s.art062 Procedure for obtaining evidence for proceedings under the European Patent Convention
s.art063 Communication of information to the European Patent Office
Part 6

INTERNATIONAL APPLICATIONS

1 of 10 sections shown
s.art069 Necessary translations under section 89A(3) and (5) Regulated
Other duties (1) — Crown / regulator
  • Comptroller must notify applicant when a necessary patent translation is missingCrown / Minister / Government department
9 other sections in this Part — procedural and definitional
s.art064 Interpretation relating to international applications
s.art065 Filing of international applications at the Patent Office
s.art066 Beginning of national phase
s.art066 Amendment of international application before grant
s.art067 International exhibitions
s.art068 Altered prescribed periods
s.art070 Requirements of necessary translations
s.art071 Directions under section 89(3) and (5)
s.art072 Circumstance prescribed for the purposes of section 89(3)
Part 7

PROCEEDINGS HEARD BEFORE THE COMPTROLLER

8 of 20 sections shown
s.art074 Overriding objective Regulated
Other duties (1) — Crown / regulator
  • Comptroller must deal with patent cases justly and parties must cooperateCrown / Minister / Government department
s.art075 Publication of notices Regulated
Other duties (1) — Crown / regulator
  • Comptroller must advertise objectionable events in the journalCrown / Minister / Government department
s.art077 Notification of the parties Regulated
Other duties (1) — Crown / regulator
  • Comptroller must notify patent applicant/proprietor when proceedings startCrown / Minister / Government department
s.art078 The counter-statement Regulated
  • File a counter-statement admitting, denying or challenging every allegationAny Person
s.art079 Copies of documents Regulated
  • Attach copies of documents referred to in statements filed at the Patent OfficeAny Person
s.art080 Evidence rounds and the hearing Regulated
  • File Patents Form 4 to continue a patent case after a counter-statementApplicant
s.art084 Hearings in public Regulated
Other duties (1) — Crown / regulator
  • Comptroller must hold patent hearings in public unless privacy is justifiedTribunal / Court
s.art089 Proceedings started under section 46(3) by a person other than the proprietor Regulated
Other duties (1) — Crown / regulator
  • IPO must notify patent proprietor of licence applications and set a response periodStatutory regulator
12 other sections in this Part — procedural and definitional
s.art073 Scope and interpretation
s.art076 Starting proceedings
s.art081 Alteration of time limits
s.art081 Failure to file Patents Form 4
s.art082 General powers of the comptroller in relation to proceedings before him
s.art083 Striking out a statement of case and summary judgment
s.art085 Security for costs or expenses
s.art086 Powers of comptroller to compel attendance of witnesses and production of documents
s.art087 Evidence in proceedings before the comptroller
s.art088 Proceedings in Scotland
s.art090 Licences following entitlement proceedings
s.art091 Period prescribed for applications by employee for compensation
Part 8

OPINIONS

5 of 9 sections shown
s.art094 Refusal or withdrawal of request Regulated
Other duties (1) — Crown / regulator
  • Comptroller must notify requester before refusing or withdrawing an opinion requestStatutory regulator
s.art095 Notification and advertisement of request Regulated
Other duties (1) — Crown / regulator
  • Comptroller must notify parties and advertise patent opinion requestsStatutory regulator
s.art097 Issue of the opinion Regulated
Other duties (1) — Crown / regulator
  • Comptroller must issue patent opinion after request procedureCrown / Minister / Government department
s.art099 Procedure on review Regulated
Other duties (1) — Crown / regulator
  • IPO must process and advertise patent review applicationsStatutory regulator
s.art100 Outcome of review Regulated
Other duties (1) — Crown / regulator
  • Comptroller must decide whether to set aside or uphold the reviewed opinionStatutory regulator
4 other sections in this Part — procedural and definitional
s.art092 Interpretation
s.art093 Request for an opinion under section 74A
s.art096 Submission of observations and observations in reply
s.art098 Review of opinion
Part 9

MISCELLANEOUS

13 of 21 sections shown
s.art102 Appointing advisers Regulated
Other duties (1) — Crown / regulator
  • Comptroller must settle instructions for any appointed adviserStatutory regulator
s.art104 Failure to furnish an address for service Regulated
  • Furnish an address for service to the IPO within 2 months of being directedAny Person
s.art106 Remission of fees Regulated
Other duties (1) — Crown / regulator
  • Comptroller must refund fees for lapsed or invalid SPCCrown / Minister / Government department
s.art108 Extension of time limits Regulated
Other duties (1) — Crown / regulator
  • Comptroller must grant 2-month extension when Form 52 request is validStatutory regulator
s.art110 Interrupted days Regulated
Other duties (1) — Crown / regulator
  • Comptroller must move deadlines that fall on interrupted daysCrown / Minister / Government department
s.art111 Delays in communication services Regulated
Other duties (1) — Crown / regulator
  • Comptroller must extend deadlines caused by communication-service failuresStatutory regulator
s.art112 Copies available to the comptroller Regulated
Other duties (1) — Crown / regulator
  • Comptroller must make and certify copies of patent applicationsCrown / Minister / Government department
s.art113 Translations Regulated
  • Provide English translation for non-English documents filed at the IPOAny Person
s.art114 Translations in proceedings in relation to a European patent (UK) Regulated
  • File English translation of French/German European patent when starting IPO proceedingsAny Person
s.art115 Establishing the accuracy of translations Regulated
Other duties (1) — Crown / regulator
  • Comptroller must notify filer when translation accuracy is in doubtCrown / Minister / Government department
s.art116 Supplementary protection certificates Regulated
Other duties (1) — Crown / regulator
  • Comptroller must send SPC fee-due and late-payment noticesStatutory regulator
s.art117 The journal Regulated
Other duties (1) — Crown / regulator
  • Comptroller must publish official journal of patent proceedingsCrown / Minister / Government department
s.art118 Reports of cases Regulated
Other duties (1) — Crown / regulator
  • Comptroller must publish reports of IP case decisionsStatutory regulator
8 other sections in this Part — procedural and definitional
s.art101 Agents
s.art103 Address for service
s.art105 Correction of errors
s.art107 Correction of irregularities
s.art109 Extension of time limits specified by comptroller
s.art116 Notifications relating to supplementary protection certificates
s.art119 Publication and sale of documents
s.art120 Transitional provisions and revocations
Schedules

Schedules

2 of 53 shown
s.sch001 A request by a person for biological material to be made available Regulated
Other duties (1) — Crown / regulator
  • Comptroller must send copies of authorisation certificate when grant is madeStatutory regulator
s.sch001 Request for a sample to be made available to expert Regulated
Other duties (1) — Crown / regulator
  • Comptroller must process expert sample requests and issue certificatesStatutory regulator
51 other schedules
s.sch001 Introductory
s.sch001 Specification of an application for a patent, or of a patent, for an invention which involves the use of or concerns biological material
s.sch001 The first and second requirements
s.sch001 The undertaking
s.sch001 Restriction of availability of biological material to experts
s.sch001 New deposits
s.sch002 A4 matt white paper must be used.
s.sch002 The capital letters in any typeface or font used must...
s.sch002 There must be a margin around any drawing or photograph...
s.sch002 All drawings or photographs must be numbered consecutively in a...
s.sch002 The drawings or photographs must begin on a new sheet...
s.sch002 The pages containing the drawings or photographs must be numbered...
s.sch002 Drawings must comprise black lines and may be shaded where...
s.sch002 Drawings may include cross-hatching to illustrate the cross-sections of a...
s.sch002 Any scale or other reference for making measurement must be...
s.sch002 Any drawing or photograph must be produced in such manner...
s.sch002 A drawing or photograph must not be included in the...
s.sch002 A document in paper form must be free from tears,...
s.sch002 The capital letters in any typeface or font used in...
s.sch002 Photographs must be black and white, clear and capable of...
s.sch002 References must only be included in the drawing or photograph...
s.sch002 Tables of information may only be included in the claims...
s.sch002 The terminology and any references used must be consistent throughout...
s.sch002 Where units of measurement used in the application are not...
s.sch002 Only technical terms, signs and symbols which are generally accepted...
s.sch002 Frames (lines surrounding matter) must not be used.
s.sch002 The pages of the description and claims must be numbered...
s.sch002 But where a sequence listing is set out at the...
s.sch002 Page numbers must be located at the top or bottom...
s.sch002 The minimum margins in any document must be 20mm.
s.sch002 Each of the following— (a) the request for the grant...
s.sch002 The abstract, description and claims must use at least 1.5...
s.sch005 Interpretation
s.sch005 Application of these Rules to existing patents and applications
s.sch005 Application of the 1995 Rules to sections 8 and 12
s.sch005 Periods of time
s.sch005 Proceedings before the comptroller
s.sch005 Service by post
s.sch005 Applications to which certain amendments made to the Act by the Regulatory Reform (Patents) Order 2004 do not apply.
s.sch005 Security for costs
s.sch005 Patent applications filed before 7th January 1991
s.sch005 Patent applications filed between 7th January 1991 and 27th July 2000
s.sch005 Continued application of Patents Rules 1968 to existing patents
s.schedule/3/part/1/paragraph/wrapper1n2 Patents Act 1977 section 8(1) (reference regarding entitlement in relation...
s.schedule/3/part/2/paragraph/wrapper2n2 Patents Act 1977 section 27(5) (opposition to amendment of specification...
s.schedule/3/part/3/paragraph/wrapper3n2 Patents Act 1977 section 47(6) (opposition to cancellation of licence...
s.schedule/3/part/4/paragraph/wrapper4n2 Patents Rules 2007 rule 74 (overriding objective) rule 79 (copies...
s.schedule/3/part/5/paragraph/wrapper5n2 Patents Rules 2007 rule 83 (striking out a statement of...
s.schedule/4/part/1/paragraph/wrapper6n2 rule 6(2)(b) (declaration of priority for the purposes of section...
s.schedule/4/part/2/paragraph/wrapper7n2 rule 8(1) and (2) (filing of information and priority documents)...
s.schedule/4/part/3/paragraph/wrapper8n2 rule 10(3) (filing of statement of inventorship and the right...

Help complying

Guvnor’s practical routes through this instrument.

1 more guide that reference this instrument
Apply for a UK patent

Duty extraction and severity labels are Guvnor’s analysis of the instrument, not the instrument itself. Always verify against the linked source text.