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123.01

This gives a general power to the Secretary of State to make rules under the Act, see 0.03 in the Introduction section of this Manual. Although s.123(2), (6) and (7) refer to rules for specific purposes, the rule-making power is not limited to those purposes. The rules are applicable to business and other matters arising under the 1977 Act and also govern the business of the Office in relation to European patents, applications for European patents and international applications for patents (rr.58 to 72 being specific to such patents or applications but many others of the rules are also relevant). There are six schedules to the rules, see 0.04 in the Introduction to this Manual.

123.02

The Rules thus have the force of statute and where the applicant fails to comply with them the comptroller has power to refuse grant. However, the Rules are subordinate to the Act from which they derive their authority. The Rules therefore must be read together with the Act and cannot override express provisions in the Act.

123.02.1

Reg 4(1) of the Patents (Supplementary Protection Certificate for Medicinal Products) Regulations states that for the purposes of s.123(1) matters relating to supplementary protection certificates shall be the business of the Office. Reg 4(2) provides that the power of the Secretary of State to make rules under s.123 shall include the power to make rules in respect of such certificates and applications for said certificates and that ss.123(2)-(7) and 124 shall apply accordingly. The Patents Rules 2007 and the Patents (Fees) Rules 2007 therefore include specific provisions for supplementary protection certificates. See the Supplementary Protection Certificates section of this Manual for further details.

123.03

S.123 (except for sub-sections (6) and (7)) is merely an enabling section allowing the making of rules; it does not follow that a rule must have been made providing for any particular contingency. In Tokan Kogyo KKs Application [1985] RPC 244 it was held that even if it were accepted that s.123(2)(b) see 123.06 to 123.10.2 contemplates the making of rules authorising the rectification of errors and omissions on the part of applicants or their agents, the plain fact is that the only rule relating to correction of irregularities in procedure is r.107, the provison to which mentions errors and omissions on the part of only the Office.

Form and contents of documents

123.04

The form and presentation of documents forming a 1977 Act application are governed by the rules, especially rules 12 and 14 (together with Schedule 2), see 14.26 to 14.57, and rule 15 with regard to the abstract, see 14.169 to 14.189 . Information concerning biological material should, where applicable, be included in the application in accordance with rule 13 and Schedule 1, see chapter on s.125A. Rules 76(4), 78(1) and 87 govern the form of statements of case (as defined in r.73(3)) and evidence filed at the Office. The content and layout of the Patents Forms is set out by directions made under section 123(2A) (see.123.70.1). Requirements with regard to translations of European patents (UK) and applications therefore are given in rules 56 and 57. A number of the rules require that certain documents should be filed in duplicate.

[Documents produced on machines which use thermal paper, may fade within months if not correctly stored. Such material can be recognised by the waxy feel of the paper and the slightly blurred image. Any such documents received by staff should be photocopied as soon as possible after receipt, and both the thermal print and the photocopy should be placed on file. ]

123.05

Part 7 of the Patents Rules 2007 (see particularly rules 73-88) provides a general procedural code for the conduct of proceedings heard before the comptroller. It applies to the applications, requests and references mentioned in Part 1 of Schedule 3 to the Rules and to the oppositions mentioned in Part 2 of that schedule (which start proceedings), including proceedings already started when the Rules entered into force on 17 December 2007. The procedure is explained in outline below, but a more detailed explanation of how it applies in practice is given in Tribunal Practice Notice 6/2007 (which is reprinted in the Relevant Official Notices and Directions section of this Manual) and in the Patent Hearings Manual and Tribunal Patents Manual. Any requirements specific to particular sections are discussed in the chapters relating to such sections. The provision of security for costs or expenses in proceedings before the comptroller is governed by s.107(4) and r.85 (see 107.10).

123.05.1

r.74 is also relevant.

The procedural code of Part 7 has the overriding objective of enabling the comptroller to deal with cases justly. The criteria for this are listed in r.74(2) and are equivalent to those applying to the court under the Civil Procedure Rules. The comptroller is required to seek to give effect to the overriding objective when theyexercise any power or interpret any rule in Part 7, and the parties to proceedings are required to help the comptroller to further the overriding objective.

123.05.2

Those rules in part 7 which are listed in Part 4 of Schedule 3 (rr.74, 79, 80(2) to (6), 81, 82, 84 and 87) apply to any proceedings, including ex parte hearings, heard before the comptroller under the Patents Act 1977.

123.05.3

r.75, r.76(2) is also relevant.

In the case of oppositions, Part 7 draws a distinction between those which start proceedings and those (in respect of some provisions in ss. 47 and 52 concerning licences) which arise after proceedings have started. These are listed in Parts 2 and 3 respectively of Schedule 3. Except in the case mentioned in rule 105(5)(a correction under s.117 to which no person could reasonably object), the comptroller must advertise in the journal any event which can give rise to an opposition under any of the provisions in Parts 2 and 3. For Part 2 oppositions, a person has a period of four weeks from the date of the advertisement to start opposition proceedings (see 123.05.4), except in the case of oppositions under s.75(2) to amendment in infringement or revocation proceedings for which the period is two weeks. For Part 3 oppositions, see 123.05.6.

123.05.04

r.44(7), r.76 is also relevant.

A person must start proceedings by filing in duplicate the relevant Patents Form and a statement of grounds, whereupon they become a claimant. The relevant form is Form 2 for the applications, requests and references in Part 1 of Schedule 3 (except those relating to supplementary protection certificates for medicinal and plant protection products under Community legislation for which it is Form SP3), or Form 15 for the oppositions in Part 2 of Schedule 3. The fact that such an application, reference, request or opposition has been made is recorded in the register. The statement of grounds must include a concise statement of the facts and grounds on which the claimant relies and specify the remedy which they seek. In cases involving licences, the statement must, where appropriate, also include the period or terms of the licence which the claimant believes to be reasonable.

123.05.5

r.77 is also relevant.

The comptroller must notify the applicant for, or proprietor of, the patent in suit that proceedings have started, and may also notify any other person who appears to the Comptroller like

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