Changes to the Patents Rules 2007

As has been already mentioned by me to the IPKat here, it has been brought to my attention (thanks to this anonymous comment) that the UK-IPO has arranged to have some changes made to the Patents Rules 2007, as a result of what what can only be fairly described as a bit of a cock-up in legal drafting.  The 2007 Rules were prepared in the form of a complete re-write of the old 1995 Rules, which were considered by the IPO to be too complicated and over-amended.  This caused the IPKat some consternation at the time, as it involved learning a whole new set of rule numbers and new terms to replace the ones that he had only recently memorised and been examined on.  However, they gradually started to become accepted and are now part of the regular IP furniture.

One thing that wasn't objected to at the time, which now seems a bit surprising, is that there were many instances of the term "beginning with" to define time periods, where different wording had been used in the 1995 Rules. We have recently been reminded, in the recent decision in Rigcool v Optima Solutions (commented on by me here), that when this wording is applied to a period in years or months, the last day of the period must be considered to be the day before the anniversary date. The UK-IPO have, however, been operating all this time on the assumption that all such dates in the Rules expired on the anniversary day instead, and have been advising applicants and their representatives accordingly.  The IPO have therefore been implementing their own Rules incorrectly for nearly four years.

As a result of this, the IPO this week issued a new Practice Notice, in which a new Statutory Instrument is mentioned. The Patents (Amendments) Rules 2011, SI 2011 No. 2052 will have the effect, when it comes into force on 1 October 2011, of changing all instances of the phrase "beginning with" to "beginning immediately after".  This applies to the following parts of the 2007 Rules:

Rule 5(2) (International Exhibitions)
Rule 8(5) (Filing of priority documents to support a declaration under section 5(2))
Rule 10(3) (Mention of the inventor)
Rule 12(3) (Applications for the grant of patents under sections 14 and 15)
Rule 12(9) (Applications for the grant of patents under sections 14 and 15)
Rule 18(2) (Missing Parts)
Rule 18(7)(a) (Missing Parts)
Rule 18(7)(b) (Missing Parts)
Rule 19(3)(a) (New applications filed as mentioned in section 15(9))
Rule 20(3)(a) (New applications under sections 8(3), 12(6) and 37(4))
Rule 20(3)(b) (New applications under sections 8(3), 12(6) and 37(4))
Rule 21(1)(a)(i) (Extensions for new applications)
Rule 21(1)(b)(i) (Extensions for new applications)
Rule 22(3) (Periods prescribed for the purposes of sections 15(10) and 17(1))
Rule 22(5)(a)(i) (Periods prescribed for the purposes of sections 15(10) and 17(1))
Rule 22(5)(b)(i) (Periods prescribed for the purposes of sections 15(10) and 17(1))
Rule 22(5)(b)(ii) (Periods prescribed for the purposes of sections 15(10) and 17(1))
Rule 22(7)(a) (Periods prescribed for the purposes of sections 15(10) and 17(1))
Rule 22(7)(b)(i) (Periods prescribed for the purposes of sections 15(10) and 17(1))
Rule 22(7)(b)(ii) (Periods prescribed for the purposes of sections 15(10) and 17(1))
Rule 24(2) (Correcting a declaration made for the purposes of section 5(2))
Rule 26(1) (Publication of application)
Rule 28(2) (Request for substantive examination under section 18)
Rule 28(5)(a) (Request for substantive examination under section 18)
Rule 28(7) (Request for substantive examination under section 18)
Rule 30(2)(a) (Period for putting application in order)
Rule 30(2)(b) (Period for putting application in order)
Rule 30(3)(a)(ii) (Period for putting application in order)
Rule 30(4) (Period for putting application in order)
Rule 31(4)(a) (Amendment of application before grant)
Rule 32(2)(a) (Reinstatement of applications under section 20A)
Rule 32(2)(b) (Reinstatement of applications under section 20A)
Rule 32(8) (Reinstatement of applications under section 20A)
Rule 37(3)(a) (Renewal of patents: first renewal)
Rule 37(4)(a)(i) (Renewal of patents: first renewal)
Rule 40(7) (Restoration of lapsed patents under section 28)
Rule 43(4) (Application for, and cancellation of, an entry that licences are available as of right)
Rule 51(2)(b) (Restrictions on inspection of documents)
Rule 52(4) (Request for information where section 118(4) applies)
Rule 53(3)(a) (Confidential documents)
Rule 57(6) (Corrected translations)
Rule 58(3) (Procedure for making a conversion request under section 81(2)(b)(i))
Rule 58(4) (Procedure for making a conversion request under section 81(2)(b)(i))
Rule 59(1) (Procedure for making a conversion request under section 81(2)(b)(ii))
Rule 59(3) (Procedure for making a conversion request under section 81(2)(b)(ii))
Rule 60 (Request for substantive examination following a direction under section 81)
Rule 66(1) (Beginning of national phase)
Rule 66(2) (Beginning of national phase)
Rule 66(3) (Beginning of national phase)
Rule 67(2) (International exhibitions)
Rule 68(2)(b) (Altered prescribed periods)
Rule 68(3)(b) (Altered prescribed periods)
Rule 68(4)(a) (Altered prescribed periods)
Rule 68(4)(b) (Altered prescribed periods)
Rule 71(4) (Directions under section 89(3) and (5))
Rule 76(2)(a) (Starting proceedings)
Rule 76(2)(b) (Starting proceedings)
Rule 77(8) (Notification of the parties)
Rule 90(1) (Licences following entitlement proceedings)
Rule 90(2) (Licences following entitlement proceedings)
Rule 91(2)(b)(ii) (Period prescribed for applications by employee for compensation)
Rule 96(7) (Submission of observations and observations in reply)
Rule 98(1) (Review of opinion)
Rule 99(4)(a) (Procedure on review)
Rule 99(4)(b) (Procedure on review)
Rule 104(2) (Failure to furnish an address for service)
Rule 108(2)(c) (Extension of time limits)
Rule 113(6) (Translations)
Rule 116(2)(b) (Supplementary protection certificates)
Schedule 1, paragraph 3(3)(a)(i) (The first and second requirements)
Schedule 1, paragraph 3(3)(a)(ii) (The first and second requirements)
Schedule 1, paragraph 3(3)(c) (The first and second requirements)
Schedule 1, paragraph 6(5)(b) (Restriction of availability of biological material to experts)
Schedule 1, paragraph 7(4) (Request for a sample to be made available to expert)
Schedule 5, paragraph 7(6) (Patent applications filed before 7th January 1991)

The effect of all this will be (assuming of course the IPO have got it right this time) that all the relevant periods will now expire on the same day of the month on which the periods start.  Until 1 October, the IPO will, where relevant, be using the get-out clause of Rule 107(3) to extend any period to what they thought it would have been had the Rules been drafted correctly in the first place.  Periods as set out in the Act, however, will not be altered, and must presumably be interpreted accordingly.

As I mentioned in my earlier post, something seemed to be wrong.  It now seems that this has been recognised and something has been done to fix it, even if it is all a bit of a fudge.