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Modified Application of the Act and Rules to United Kingdom and European Patent Office Applications

Patents Rules

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SEVENTH SCHEDULE1Rule 120Modified Application of the Act and Rules to United Kingdom and European Patent Office Applications1. In this Schedule, “foreign application” means —(a)an application for a patent under the United Kingdom Patents Act 1977; or(b)an application designating the United Kingdom filed at the European Patent Office.2. Where a foreign application is pending on 23rd February 1995, and the applicant makes an application under section 116(6) of the Patents Act (Cap. 221, 1995 Ed.) for the grant of a patent, the provisions of the Act and these Rules shall apply to the foreign application with the following modifications:(a)where the application under section 116(6) of the Patents Act (Cap. 221, 1995 Ed.) is filed after the 16-month period prescribed in rule 9(2) or 18(1) —(i)all the requirements of rules 9 and 18, except for the prescribed period of 16 months, shall be complied with within the same day of filing the application; and(ii)the requirements of paragraph 1(2)(a)(ii) and (3) of the Fourth Schedule, in a case to which they apply, shall be complied with on or before the time ascertained under the said paragraph 1(3) or the time of filing the application, whichever is the later;(b)the application for the patent shall, notwithstanding rule 19, be treated as having been abandoned unless —(i)the description, claims and drawings required to be filed are identical with those as filed with the foreign application;(ii)the application is accompanied by a certified copy of the description, claims and drawings as filed with the foreign application; and(iii)a declaration stating that the foreign application was pending on 23rd February 1995 is made within the same day of filing the application;(c)the requirements of section 26(1) are modified to the extent that the application shall be accorded, under section 116(6) of the Patents Act (Cap. 221, 1995 Ed.), the same date of filing as the date of filing of the foreign application, when the following considerations are satisfied in relation to the application:(i)the considerations of section 26(1)(a) and (b); and(ii)the documents filed at the Registry contain a description of the invention which is identical with that as filed with the foreign application as of its filing date;(d)the period prescribed for the purposes of section 28(1) shall be the period which expires on the actual date of filing of the application;(e)the requirements of rule 29 are modified to the extent that the 18-month period under rule 29(1) or (2) shall commence from the actual date of filing the application;(f)the requirements of rule 33(1) are modified to the extent that the requirements of rule 19 as modified by sub-paragraph (b) also apply;(g)the requirements of rule 38 in force immediately before 1st July 2004 shall apply and are modified to the extent that the 16-month period commences from the actual date of filing the application;(h)the requirements of repealed section 29(1)(a) in force immediately before 1st July 2004 shall apply and are modified to the extent that instead of filing a request for a search report, the applicant may file a copy of the search report which is issued in respect of the foreign application, provided that the application in Singapore relates to the same or substantially the same invention as the foreign application at the time of search;(i)the requirements of repealed section 29(1)(b) in force immediately before 1st July 2004 shall apply and are modified to the extent that instead of filing a request for a search and examination report, the applicant may file a copy of the search report and the examination report resulting from an examination as to substance which is issued in respect of the foreign application, provided that the application in Singapore relates to the same or substantially the same invention as the foreign application at the time of search and at the time of examination, respectively;(j)repealed section 29(12) in force immediately before 1st July 2004 shall apply and is modified to the extent that “corresponding application” includes the foreign application;(k)the conditions of repealed section 30(2)(c) in force immediately before 1st July 2004 shall apply and are modified to the extent that the search report and the substantive examination report which is issued in respect of the foreign application can be substituted for —(i)the search and examination report referred to in repealed section 30(2)(c)(i) in force immediately before 1st July 2004; or(ii)the search report and the examination report referred to in repealed section 30(2)(c)(ii) or (iii) in force immediately before 1st July 2004,as the case may be;(l)the requirements of rule 43 in force immediately before 1st July 2004 shall apply and are modified to the extent that the period prescribed under paragraph (1) or (2) of that rule shall be 22 months from the actual date of filing the application;(m)the requirements of rule 46(8) in force immediately before 1st July 2004 shall apply and are modified to the extent that the period referred to in that provision shall be 39 months from the actual date of filing the application under section 116(6) of the Patents Act (Cap. 221, 1995 Ed.);(n)the requirements of rule 47(1) in force immediately before 1st July 2004 are modified to the extent that the period prescribed under that provision shall be 42 months from the actual date of filing the application; and(o)the date prescribed for the purposes of section 36(1) shall be the date of filing of the application accorded under section 116(6) of the Patents Act (Cap. 221, 1995 Ed.).3. Rule 108(2) and (3) shall, when applied to any foreign application referred to in paragraph 2, be modified to read as follows:“(2) The provisions referred to in paragraph (1) are rules 9(1), 19(2), 26(5) and (6), 28 (so far as it relates to rule 9(1)), 46(4), (5), (8) and (10), 49, 51(1), 52(2), 52A(8), 53(1), 54(2), 73(1), 74(1), 75, 85(1), 91(3) and (5) and paragraph 4(2) of the Fourth Schedule.(3) A time or period prescribed in rules 9(2), (2A) and (5) (including the period therein prescribed as substituted by rule 2(a) of the Seventh Schedule), 18(1) (including the period therein prescribed as substituted by paragraph 2 (a) of the Seventh Schedule), 26(2) and (4), 28 (except so far as it relates to rule 9(1)), 38(1), 43 (including the period therein prescribed as substituted by paragraph 2(l) of the Seventh Schedule), 47(1) and (2), 53(4), 86(1), (6) and (8) and rule 1(3) of the Fourth Schedule shall, if not previously extended, be extended for a period not exceeding 3 months upon filing Patents Form 45 before the end of the period for which extension is sought.”.[S 432/2020 wef 05/06/2020]4. Sections 26(6), 27(1), 29, 30, 31, 36(2), 36A and 69 shall not apply to any foreign application referred to in paragraph 2, and instead sections 26(6), 27(1), 29, 30, 31, 32, 36(2), 69 and 79 in force immediately before 1st July 2004 shall apply to that application with the modifications referred to in paragraph 2.5. Rules 27(1), 36, 37, 38, 40(1), 41, 42, 42A, 43, 44, 45(1), (3) and (4), 46, 47(1), (2) and (4A), 47A, 49(2), 51(2A) and 51A shall not apply to any foreign application referred to in paragraph 2, and instead —(a)rules 27(1), 36, 37, 38, 39, 40(1), 41, 42, 43, 44, 45(1) and (3), 46, 47(1) and (2), 49(2) and 79 in force immediately before 1st July 2004 shall apply to that application with the modifications referred to in paragraph 2; and(b)any reference in these Rules to rules 27(1), 36, 37, 38, 40(1), 41, 42, 43, 44, 45(1) and (3), 46, 47(1) and (2) and 49(2) shall be construed in accordance with sub-paragraph (a).

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