The Patents (Amendment) (No. 2) Rules 1999
These Rules further amend the Patents Rules 1995 (S.I. 1995/2093) (which were previously amended by the Patents (Amendment) Rules 1999 (S.I. 1999/1092) and the Patents and Trade Marks (World Trade Organisation) Regulations 1999 (S.I. 1999/1899)) (“the Patents Rules”). In addition to minor and drafting amendments, these Rules—shorten the prescribed time limits in relation to certain proceedings under the Patents Act from two months to six weeks. The relevant rules of the Patents Rules where the time limits have been reduced and the proceedings to which they apply are:rules 7(3), (4) and (5) (references under section 8(1)(a) or 12(1)(a));rules 8(3), (5), (6) and (7) (references by co-proprietors under section 8(1)(b) or 12(1)(b));rule 12(2)(request by joint applicant under section 10 or 12(4);rule 13(2)(reference to the comptroller under section 11(5);rule 14(3)(mention of inventor under section 13);rule 40(4)(amendment of specification after grant);rule 43(4)(surrender of patents);rules 54(3), (4) and (5) (reference of question to the comptroller under section 37(1);rule 58(2)(reference to comptroller under section 38(5);rules 59(3), (4) and (5) (application under section 40 for compensation);rules 62(3)and (4) (application under section 46(3) to settle licences of right);rule 71(3)(opposition under section 52(1);rules 72(4), (5), (6) and (7) (procedure on reference to comptroller under section 61(3);rules 73(3), (4) and (5) (procedure where validity of patent in dispute);rules 74(3)and (4) (procedure on application under section 71); andrules 75(3), (4) and (5) (procedure on application for revocation under section 72);provide for the filing of translations or declarations in relation to translations of priority applications up to the date of grant (rule 4);provide that references under section 8(1)(a) or (b) or 12(1)(a) or (b) do not have to be copied by the comptroller to any person who has already given his consent (rules 5 and 6);provide for any person to file a request to add an inventor’s name except where inventorship is put in issue under sections 8 or 37 (rule 7);provide for the extension of the period in which to file a new application under section 15(4) (rule 8);provide for the extension of the time for filing claims, abstract and search request where a new application is filed under section 8(3), 12(6), 15(4) or 37(4) (rule 9);provide for an extension of the time for filing a search request on a second invention under section 17(6) and (8) (rule 10);omit the form in relation to certificates of grant (rules 11 and 23);omit the requirement for the prescribed renewal fee to accompany the Patents Form 12/77 with consequential changes to Form 12/77 (rules 12, 22 and Schedule 1);provide for the surrender of patents to be given in writing and not on Form 2/77 (rule 13);provide for the comptroller to omit the address of the inventor from the register, where requested (rule 14);provide for the assignor, as the case may be, to sign applications to register or give notice of an assignment or assignation (rule 15);provide that a copy of a reference does not have to be copied by the comptroller under section 37(1) to any person who has consented (rule 16);provide for the extension of certain time limits in relation to international applications for patents: and apply rule 6(6) to such applications (rule 17);provide for the comptroller to call case management conferences and pre-hearing reviews (rule 18);provide for the giving of evidence by witness statement and the calling of witnesses in certain circumstances (rule 19); andprovide for the comptroller to shorten certain time limits as he sees fit upon notice to the parties and terms as the comptroller may direct (rule 21). The relevant rules of the Patents Rules and the proceedings to which they apply are:rules 7(3), (4) and (5) (references under section 8(1)(a) or 12(1)(a));rules 8(3), (5), (6) and (7) (references by co-proprietors under section 8(1)(b) or 12(1)(b));rule 9(2)(orders under section 8 or 12);rule 12(2)(request by joint applicant under section 10 or 12(4));rule 13(2)(reference to the comptroller under section 11(5));rule 14(3)(mention of inventor under section 13);rule 40(4)(amendment of specification after grant);rule 43(4)(surrender of patents);rules 54(3), (4) and (5) (reference of question to the comptroller under section 37(1));rule 56 (time limit for new application);rule 57(1)(request under section 38(3));rule 58(2)(reference to comptroller under section 38(5));rules 59(3), (4) and (5) (application under section 40 for compensation);rules 62(3)and (4) (application under section 46(3) to settle licences of right);rule 70(1)(procedure on receipt of application under section 48 or 51);rule 71(3)(opposition under section 52(1));rules 72(3), (4), (5), (6) and (7) (procedure on reference to comptroller under section 61(3));rules 73(3), (4) and (5) (procedure where validity of patent in dispute);rules 74(3)and (4) (procedure on application under section 71);rules 75(3), (4) and (5) (procedure on application for revocation under section 72);rule 77(1)(revocation and amendment of patents under section 73);rules 88(1)and (3) (Comptroller’s discretionary powers); andrules 88(1A)and (1B) (Comptroller’s discretionary powers).