I, PADRAIG S. Ó hIRIGHILE, Minister for Industry and Commerce, in exercise of the powers conferred on me by sections 80 and 96 of the Patents Act, 1964 (No. 12 of 1964), and, in so far as the rules are made under the said section 80, with the sanction of the Minister for Finance, hereby make the following rules :

PATENTS RULES, 1965.

GENERAL.

Citation.

1. These Rules may be cited as the Patents Rules, 1965.

Interpretation.

2. (1) In these Rules--

" the Act " means the Patents Act, 1964 (No. 12 of 1964);

" the Controller " means the Controller of Patents, Designs and Trade Marks appointed under the Act;

" the Office " means the Patents Office established by the Industrial and Commercial Property (Protection) Act, 1927 (No. 16 of 1927), and continued in being by the Act;

" convention application " and " convention country " have the meanings assigned to them by the Act.

(2) In these Rules a reference by number to a section is to the section of the Act bearing that number unless it is indicated that reference to some other Act is indicated and a reference by number to a Rule or Schedule is to the Rule of or Schedule to these Rules bearing that number.

Commencement

3. These Rules shall come into operation on such date as the Minister appoints under section 1 for the commencement of the Act.

Fees.

4. The fees to be paid in connection with patent applications and patents shall be those specified in Schedule I.

Method of payment of fees.

5. (1) Save as provided in paragraph (2) or (3) of this Rule, payment of a fee or fees by any person shall be made--

(a) by lodgment of the sum at any branch in the State of the Bank of Ireland to the credit of the Paymaster-General's Supply Account at the Bank of Ireland, College Green, Dublin, 2, accompanied by a Receivable Order in the form to be obtained at the Office, the lower part of which, when receipted by the Bank, shall be presented at the Office with the application or matter to which it relates, or

(b) by cheque payable to the Minister for Industry and Commerce and crossed " & Co.", guaranteed to the satisfaction of the Controller, drawn on any bank carrying on business in the State and presented at the Office with the application or the matter to which it relates.

(2) Payment of a fee or fees by a person who, at the date of the payment, is outside the State shall be made by banker's draft, or Post Office Money or Postal Order payable to the Minister for Industry and Commerce and crossed " & Co." and sent by post to the Office.

(3) A fee for the inspection of a register or document at the Office, or for a publication kept at the Office may be paid in cash at the Office.

Signature of documents.

6. (1) A document purporting to be signed for or on behalf of a partnership shall contain the names of all the partners in full and shall be signed by all the partners, or by any partner authorised to sign on behalf of the partnership, or by any other person who satisfies the Controller that he is authorised to sign the document.

(2) A document purporting to be signed for or on behalf of a body corporate shall be duly executed and signed by a director (if any) or the secretary (if any) of the body corporate or by any other person who satisfies the Controller that he is authorised to execute the document.

(3) A document purporting to be signed for or on behalf of an unincorporated body (not being a partnership) may be signed by any person who satisfies the Controller that he is duly authorised to sign it.

Leaving and serving documents.

7. (1) Any application, notice or other document authorised or required under the Act or these Rules, to be left, made, or given at the Office, to the Controller or to any other person may be sent by post.

(2) In proving the sending mentioned in paragraph (1) of this Rule it shall be sufficient to prove that the letter was properly addressed and prepaid (when requisite) and posted.

(3) Applications for patents sent to the Controller by post shall, as far as may be practicable, be recorded in the order of the delivery of the letters containing them.

(4) Applications for patents left at the Office otherwise than through the post shall be recorded in the order of their receipt at the Office.

(5) A letter addressed to a person registered as the proprietor of a patent at his address, or at his address for service, as it appears in the register, or to any applicant or opponent in any proceedings under the Act or these Rules at the address appearing on the application or notice of opposition, or at his address for service given in accordance with Rule 9, shall be deemed to be properly addressed.

Documents in a foreign language.

8. Where a document in a foreign language is filed in connection with any proceeding under the Act or these Rules, a translation thereof (attested to the satisfaction of the Controller) shall be furnished to the Controller.

Address for service.

9. (1) Every applicant, opponent or other party or agent in any proceeding under the Act or these Rules, and every person registered as the proprietor of a patent, who does not reside or have a place of business in the State shall give to the Controller an address for service in the State and that address may for all purposes under the Act and these Rules be treated as the actual address of such person.

(2) For the purposes of this Rule, in a case where the applicant, opponent or other party desires that the address for service shall consist of the address of a person who is registered in the register of patent agents, the Controller may accept an address for service comprising the name of the person so registered followed by a statement in the following terms :-- " at his address as recorded for the time being in the register of patent agents.".

(3) In any case where the entry of a patent in the register includes an address for service consisting of the address of a person who is registered in the register of patent agents, the address for service shall, if it differs from the address of that patent agent as recorded for the time being in the register of patent agents, be taken to be the last-mentioned address.

Agency.

10. With the exception of the signing of the following documents, namely, applications for patents, petitions to the Controller for the extension of the term of the patent, applications for the revocation of patents, the grant of a licence under a patent, the endorsement of a patent " licences of right ", the cancellation of such endorsement and the restoration of lapsed patents or applications for patents, requests for leave to amend applications or accepted specifications, authorisations of patent agents, notices of opposition in proceedings relating to patents, requests for the issue of duplicate patents, and surrenders of patents, all applications and communications to the Controller under the Act and these Rules may be signed by and all attendances upon the Controller may be made by or through a patent agent duly authorised to the satisfaction of the Controller, and any documents served upon or addressed to such patent agent shall be deemed to be served upon or addressed to the person so appointing him. In any particular case, the Controller may, if he thinks fit, require the personal signature or presence of an applicant, opponent or other person.

No patent agent who is acting for gain may be so authorised unless he is either entered in the register of patent agents kept under the provisions of section 86 or a person authorised by the Minister to act as a patent agent under subsection (2) of section 86.

The Controller shall not be bound to recognise as patent agent, or to receive further communications in respect of any business under the Act from, any person whose name has been erased from the register of patent agents kept under the provisions of the Act and not since restored, or any company or firm of which any such person continues to be a director, manager or partner or any solicitor whose name has been struck off the roll of solicitors maintained under the Solicitors Acts, 1954 and 1960, and has not since been restored or any person convicted of treason or of a felony or misdemeanour or convicted outside the State of a crime or offence which would be a felony or misdemeanour if committed in the State.

For the purposes of section 86 the authorisation of a patent agent shall be made in writing in such form as the Controller deems sufficient. The authorisation shall specify the matter or proceeding in respect of which the patent agent is appointed to act for the person making the authorisation and shall be duly signed by that person.

Power to dispense with evidence, signature, etc.

11. Where, under these Rules, any person is required to do any act or thing, or to sign any document, or to make any declaration on behalf of himself or of any body corporate, or any document or evidence is required to be produced to or left with the Controller or at the Office, and it is shown to the satisfaction of the Controller that from any reasonable cause such person is unable to do such act or thing or to sign such document or to make such declaration or that such document or evidence cannot be produced or left as aforesaid, it shall be lawful for the Controller upon the production of such other evidence and subject to such terms as he thinks fit, to dispense with any such act or thing, signature, declaration, document or evidence.

General power of amendment.

12. Any document or drawing for the amending of which no special provision is made by the Act may be amended, and any irregularity in procedure which in the opinion of the Controller may be obviated without detriment to the interests of any person may be corrected, if and on such terms and in such manner as the Controller thinks fit.

General power to enlarge time.

13. The time prescribed by these Rules for doing any act, or taking any proceedings thereunder, other than the time prescribed by Rule 25 for making a convention application, the time prescribed by Rule 84 (2) for converting an application for a patent to a convention application and the time prescribed by Rule 61 for the payment of patent renewal fees may be extended by the Controller if he thinks fit, upon such notice to other parties and upon such terms, as he may direct and such extension may be granted though the time has expired for doing such act or taking such proceedings.

Days and hours of business.

14. (1) The Office shall be open to the public for the transaction by the public of business under the Act or under any other Act for the administration of which the Controller is responsible every Monday, Tuesday, Wednesday, Thursday and Friday between the hours of 9.45 a.m. and 4.15 p.m. and any other days and hours which may from time to time be notified under this Rule, but shall not be otherwise open.

(2) Notwithstanding the provisions of paragraph (1) of this Rule the Office shall not be open--

(a) on the following days : Christmas Day, Good Friday, Saint Patrick's Day, any day which is a bank holiday or any day which may from time to time be notified under this Rule, or

(b) at any times which may from time to time be so notified on days which may from time to time be so notified.

(3) Notification under this Rule shall be by notice posted in a conspicuous place at the Office.

Excluded days.

15. (1) Whenever the last day fixed by the Act, or by these Rules, for doing any act or thing at the Office falls on any of the days on which the Office is not open (which days shall be excluded days for the purposes of the Act and these Rules), it shall be lawful to do any such act or thing on the first day which is not an excluded day next following such excluded day, or days, if two or more of them occur consecutively.

(2) Where a period of less than six days is prescribed or allowed for doing any act or taking any proceeding under the Act or these Rules, days specified in this Rule as excluded days shall not be reckoned in the computation of the period.

EXERCISE OF DISCRETIONARY POWER BY CONTROLLER.

Hearing.

16. Before exercising adversely to any person any discretionary power given to the Controller by the Act, these Rules or any other enactment, the Controller shall, if so required, hear such person thereon.

Application for hearing.

17. Save as otherwise provided by these Rules, an application for a hearing by the Controller shall be made within ten days from the date of notification by the Controller of any objection to an application or the date of any other indication that he proposes to exercise a discretionary power.

Notice of hearing.

18. (1) Upon receiving an application for a hearing the Controller shall give the person applying not less than ten days' notice of a time when he may be heard unless the parties consent to shorter notice.

(2) Within seven days from the date when the notice would be delivered in the ordinary course of post the person applying shall notify the Controller whether or not he intends to be heard in the matter.

(3) A party who fails to notify the Controller in accordance with this Rule may be treated as not desiring to be heard and the Controller may act accordingly.

Notification of decision.

19. (1) The decision of the Controller in the exercise of any discretionary power shall be notified to the person affected.

(2) A written statement of the grounds of a decision shall be furnished if application, accompanied by the prescribed fee, is made to the Controller within one month from the date of notification of the decision.

Form of statutory declaration.

20. A statutory declaration required by the Act or these Rules or used in any proceedings thereunder or required by any other enactment in connection with any proceedings before the Controller shall be headed in the matter to which it relates, drawn up in the first person and divided into paragraphs consecutively numbered, and each paragraph shall so far as is possible be confined to one subject. Every statutory declaration shall state the description and true place of abode of the person making the same, and shall be written, typed, lithographed or printed book-wise.

Person before whom declaration made outside the State is to be taken.

21. A statutory declaration required by the Act, or these Rules, or used in any proceedings thereunder, or required by any other enactment in connection with any proceedings before the Controller, shall, if made and subscribed outside the State, be made and subscribed before a consular officer, a notary public or a judge or magistrate.

Notice of seal of officer taking declaration to prove itself.

22. Any document purporting to have affixed, impressed or subscribed thereto or thereon the seal or signature of any person authorised by the last foregoing Rule to take a declaration, in testimony that the declaration was made and subscribed before him, may be admitted by the Controller without proof of the genuineness of the seal, the signature, the official character of the person or his authority to take the declaration.

Time for filing evidence, etc.

23. The Controller may, at any stage of any proceedings before him direct that such documents, information or evidence as he may require shall be furnished within such period as he may fix.

APPLICATIONS.

Form of application.

24. The form of application for a patent shall be the form headed " Form No. 1 " or " Form No. 2 " (as may be appropriate) in Schedule II.

Date of filing convention applications.

25. The period referred to in subsection (3) of section 6, during which a convention application may be made, shall be twelve months.

Documents to accompany application.

26. (1) An application for a patent shall be accompanied by :--

(a) two copies of the provisional or complete specification and of the drawings (if any);

(b) an authority duly given in favour of the patent agent, if one has been authorised;

(d) if the application is made by the legal representative of a person who has died possessed of an invention without making an application for a patent, the probate of the will, or the letters of administration granted of the estate and effects, or an official copy of such probate or letters which shall be supported by such further evidence as the Controller may require;

(e) in the case of an application by the assignee of the person claiming to be the true and first inventor, the declaration required by subsection (2) of section 7;

(f) except in the case of an application (other than a convention application) which is accompanied by a complete specification, a declaration as to the inventorship of the invention disclosed in the complete specification, together with a statement as to the right of the applicant to apply for a patent for this invention (if this is not clear from the application form), shall be filed with the complete specification, provided that, when so requested by the applicant, the Controller may, if he sees fit, dispense with the said declaration;

(g) in the case of a convention application, a copy of the specification and drawings or documents filed in respect of the relevant application or applications in a convention country or countries, duly certified by, or on behalf of, the official head of the patent office of the convention country, or otherwise verified to the satisfaction of the Controller;

(h) a statement with the complete specification as to which of the alternative forms of evidence prescribed in Rule 27 the applicant proposes to furnish in accordance with subsection (6) of section 8;

(i) a list of the enclosures accompanying the application.

(2) The second copy of the specification and drawings referred to in subparagraph (a) of paragraph (1) of this Rule, the authority referred to in subparagraph (b), the specification and drawings or documents referred to in subparagraph (g) and the statement referred to in subparagraph (h) may be furnished at any time not later than three months after the date of filing the application or specification, as the case may be, and the probate or letters of administration referred to in subparagraph (d) and the declarations referred to in subparagraphs (e) and (f) may be furnished at any time not later than six months after the date of filing the application or specification, as the case may be; provided that these periods may be extended by the Controller for a further period not exceeding six months if request for such extension, accompanied by the prescribed fee or evidence of the payment thereof is made on Form 3 in Schdule II at any time within the extended period specified in the request.

Evidence of prior publication.

27. (1) Where a complete specification is filed in pursuance of an application for a patent, the evidence to be furnished in accordance with subsection (6) of section 8 in relation to the invention so far as claimed in any claim of the said specification shall be either :--

(a) a statutory declaration made by a person entered on the Register of Patent Agents or the Register of Clerks or the Register of Patent Agents kept in London giving the result of an investigation the person has made for the purpose of ascertaining whether the said invention has been published, before the date of filing of that specification, in any specification filed in pursuance of an application for a patent made to the Patent Office in London within thirty years next before that date, and giving also the name of the place at which the investigation was made; or

(b) where application is also made to the Patent Office, London, for a patent in respect of the said invention, a certificate issued by or on behalf of the head of the Patent Office, London, giving the result of an investigation made by that office for the purpose of ascertaining whether the invention so far as claimed in any claim of the complete specification filed in pursuance of that application has been published before the date of filing of that specification, in any specification filed in pursuance of an application for a patent made to that office within thirty years next before that date; or

(c) a certificate issued by a competent officer of the Institut International des Brevets, The Hague, giving the result of an investigation made by that institute for the purpose of ascertaining whether the said invention has been published, before the date of filing of that specification, in any specification filed in pursuance of an application for a patent made to the Patent Office, London, within thirty years next before that date; or

(d) a certified copy of the accepted complete specification filed pursuant to an application for a patent in respect of the said invention made to the Patent Office, London, or

(e) a certified copy of the published specification filed pursuant to an application in respect of the said invention made to Deutsches Patentamt, Munich.

(2) If evidence in accordance with subparagraph (b) or (c) of paragraph (1) is furnished, it shall be accompanied by a certified copy of the specification in respect of which the investigation referred to in those subparagraphs was made.

(3) (a) If evidence in accordance with subparagraph (a), (b) or (c) of paragraph (1) is furnished, it shall be submitted within two years from the date of filing the complete specification.

(b) If evidence in accordance with subparagraph (d) or (e) of paragraph (1) is furnished, it shall be submitted within two months from the date when the foreign specification was published;

provided that these periods may be extended by the Controller without fee in any case in which he is satisfied that an extension is necessary by reason of circumstances outside the control of the applicant;

provided also that these periods may be extended by the Controller for a further period not exceeding three months if request for such extension, accompanied by the prescribed fee, or evidence of payment thereof, is made on Form 3 in Schedule II at any time within the extended period specified in the request.

(4) The applicant shall also furnish, if so required by the Controller, at any time before the application is accepted, a statement of all the foreign countries, if any, in which applications for protection for the said invention have been made, together with the result of any search for novelty made on such applications.

Extension of period for filing complete specifications.

28. A request for an extension of the period for filing a complete specification up to a period not exceeding fifteen months from the date of filing of the application shall be made on Form 3 in Schedule II, accompanied by the prescribed fee or evidence of payment thereof.

Cognate applications.

29. Where, in pursuance of subsection (3) of section 8, the Controller allows a single complete specification to be proceeded with in respect of two or more applications in respect of which two or more complete specifications have been filed, the single complete specification may include any matter disclosed in any of the said specifications and shall be deemed to have been filed on such date, not earlier than the earliest date on which all the matter disclosed in the said single complete specification has been disclosed to the Office in or in connection with the applications, as the Controller may direct.

Division of applications.

30. (1) Where a person making application for a patent has included in his specification more than one invention, the Controller may require or allow him to amend such application and specification and drawings or any of them so as to apply to one invention only, and the applicant may make application for a separate patent for any invention excluded by such amendment.

Every such last-mentioned application may, if the Controller at any time so directs, bear the date of the original application or such date between the date of the original application and the date of the application in question as the Controller may direct, and shall otherwise be proceeded with as a substantive application in the manner prescribed by the Act and by these Rules.

(2) Where an applicant has made two or more applications accompanied by provisional specifications for inventions which he believes to be cognate or modifications one of the other and the Controller is of opinion that such inventions are not cognate or modifications one of the other, the applicant may divide a single complete specification filed in connection with the said provisional specifications into such number of complete specifications as may be necessary to enable the applications to be proceeded with as two or more separate applications for patents for different inventions.

(3) Where a single convention application has been made in respect of all or part of the inventions in respect of which two or more applications for protection have been made in one or more convention countries, and the examiner reports that the claims of the specification filed with the said convention application relate to more than one invention, the Controller may allow one or more further applications to be filed and the specification to be divided into such number of specifications as may be necessary to enable two or more separate convention applications to be proceeded with and may direct that the said applications be deemed to have been filed on the date of filing of the original application.

Form of specification.

31. The specification must be on one or more sheets of strong white paper of foolscap size or of a size measuring from 29 to 34 cm. in depth and from 20 to 22 cm. in width. If there are several sheets they must be joined in such a manner that they can be separated and re-attached without interference with facility in reading them.

A margin of about 1½ inches or from 3 to 4 cm. must be left blank at the left-hand side of each sheet and a space of about 3 inches or 8 cm. at the head of the first sheet and a space not less at the end of the last sheet.

The specification may be written by hand or machine or be produced by lithography, printing or any similar process. It must be legibly written in deep permanent ink and on one side only of each sheet and be suitable for photocopying.

Reasonable space must be left between the lines and each fifth line should be numbered. The pages must be numbered consecutively.

There must be repeated at the head of the specification the name, Christian names, nationality and full address of the applicant and the title of the invention.

The specification must be clearly and briefly expressed and free from unnecessary repetitions.

Weights and measures and physical, chemical and other technical and scientific units and symbols shall be expressed in generally accepted terms in international use.

No drawing or sketch, other than a graphic chemical formula or a mathematical formula, symbol or equation, shall appear in the verbal part of the specification and if such a formula, symbol or equation is used therein a copy thereof, prepared in the same manner as first copy drawings, except that it may be a hand-made drawing on tracing cloth, shall be furnished if the Controller so directs.

The specification should be written without erasures, alterations or insertions. If any are made they should be initialled.

One copy of the specification must be signed by the applicant or his authorised patent agent.

Drawings.

32. The drawings must be made on pure white strong paper with smooth surface but without gloss. A second copy which must be an exact reproduction of the first may be on tough transparent paper or on tracing linen. They must be on sheets measuring 13 inches or 33 cm. in depth and from 8 inches to 8¼ inches or 21 cm. in width. In exceptional cases sheets of a width of 16 inches to 16½ inches or 42 cm. may be used. If necessary several sheets may be used and must be numbered consecutively. A marginal line should be drawn at a distance of half an inch or 2 cm. from each side of the sheet and the figures must lie within this line. The figures and all reference letters or numbers must be drawn in an upright position with reference to the top and bottom of the sheet and sufficiently apart to render them distinct, and they must be numbered consecutively and without reference to the numbers of the sheets.

The drawings must be executed throughout in absolutely black and permanent ink, without washes or colours. They must lend themselves to clear reproduction on a reduced scale by photography. Sections must be shown by diagonal hatching in such a way as not to occasion difficulty in the clear identification of reference marks and indications.

The scale of the drawings must be determined by the complexity of the figures. It will suffice if the details can be distinguished without difficulty in a photographic reduction of one-fourth the size of the original. If the scale is given on the drawings it must be drawn and not denoted by words.

All letters and figures in the drawings must be plain and clear. The lines of the same sections must be indicated by the same reference marks. The different parts of the figures must where necessary to a proper understanding of the specification be designated throughout by the same reference marks which must agree with those in the specification.

No descriptive matter shall appear on constructional drawings, but drawings in the nature of flow sheets may bear descriptive matter to show the materials used and the chemical or other reactions or treatments effected in carrying out the invention. Drawings showing a number of instruments or units of apparatus and their interconnections, either mechanical or electrical, where each such instrument or unit is shown only symbolically, may bear such descriptive matter as is necessary to identify the instruments or units or their interconnections. Such descriptive matter shall be in very dark markings on both the original and the true copy drawings and on the latter the letters shall be not less than one-quarter of an inch in height.

Where figures on a number of sheets form in effect a single complete figure, they shall be so arranged that the complete figure can be assembled without concealing any part of another figure.

The drawings on stout paper must be delivered at the Office flat or rolled, free from folds or creases rendering them unsuitable for reproduction by photography. Each sheet must contain outside the marginal line the name of the applicant, the number of the sheet, the total number of sheets and the signature of the applicant or of his patent agent.

Drawings, when supplied, shall accompany the provisional or complete specification to which they refer, but if an applicant desires to adopt the drawings filed with his provisional specification as the drawings or part of the drawings of his complete specification, he shall refer to them in the complete specification as those filed with the provisional specification.

INVESTIGATION FOR NOVELTY.

Investigation for prior publication.

33. (1) When the examiner, in making the investigation under section 12, reports that the invention so far as claimed in any claim of the complete specification has been published as described in subsection (1) or (2) of section 12 or that he is not satisfied by the information and evidence referred to in subsection (3) of section 12, the applicant shall be so informed and shall be afforded an opportunity of amending his specification and/or of furnishing further evidence under subsection (4) (b) of section 12.

(2) If the examiner finds that substantially the whole of the invention claimed has been published in a prior specification or document he may, without continuing the investigation, make a provisional report to that effect.

(3) If the applicant re-files his specification and the examiner is not satisfied either that the invention so far as claimed in any claim has not been published in any specification or other document cited by the examiner or that the priority date of the claim is not later than the date on which the relevant document was published, or is not satisfied by the evidence or further evidence referred to in paragraph (1), the applicant shall be given an opportunity to be heard in the matter if he so requests.

(4) Whether or not the applicant has re-filed his specification the Controller may appoint a hearing if he considers it desirable to do so, having regard to the time remaining for putting the application in order or other circumstances of the case.

(5) After hearing the applicant, or without a hearing if the applicant has not attended or has notified that he does not desire to be heard, the Controller may prescribe or permit such amendment of the specification as will be to his satisfaction and may refuse to accept the specification unless the amendment is made within such period as he may fix.

Investigation for prior claiming.

34. (1) When the examiner reports that the invention so far as claimed in any claim of the complete specification is claimed or described in any other complete specification falling within subsection (1) or (3) of section 13, the applicant shall be so informed and shall be afforded an opportunity of amending, or submitting amendments of, his specification.

(2) A period of two months from the date of the communication of an objection under section 13 shall be allowed for removing the objection.

(3) If the applicant so requests at any time, or if the examiner is not satisfied that the objection has been met within the period prescribed by paragraph 2, including any extension thereof which the Controller may allow, a time for hearing the applicant shall be appointed.

(4) After hearing the applicant, or without a hearing if the applicant has not attended or has notified that he does not desire to be heard, the Controller may prescribe or permit such amendment of the specification as will be to his satisfaction and may direct that a reference to such other specification as he shall mention shall be inserted in the applicant's specification unless the amendment is made or agreed to within such period as he may fix.

(5) Subject to the provisions of section 17 and Rule 36 the periods mentioned in paragraphs (2) and (4) may be extended if a request for such extension, accompanied by the prescribed fee or evidence of payment thereof, is made on Form 3 in Schedule II at any time within the extended period specified in the request, provided that the total extension of either period allowed under this provision shall not exceed three months.

(6) When, in pursuance of paragraph (4), the Controller directs that reference to another specification shall be inserted in the applicant's complete specification, the reference shall be inserted after the claims and shall be in the following form :--

Reference has been directed, in pursuance of subsection (2) of section 13 of the Patents Act, 1964 , to specification No.

(7) When after any accepted specification has been published any amendment has been made or any reference inserted therein under paragraph (4), notice thereof shall be advertised in the Journal.

Reference in case of potential infringement.

35. (1) When in making the investigation under sections 12 and 13 it appears to the examiner that the applicant's invention cannot be performed without substantial risk of infringement of a claim of another patent, the applicant shall be so informed and the procedure provided in Rule 34 (1) to (5) shall apply.

(2) When, pursuant to such procedure, the Controller directs that reference to a patent shall be inserted in the applicant's complete specification, the reference shall be inserted after the claims and shall be in the following form :--

Reference has been directed in pursuance of subsection (1) of section 14 of the Patents Act, 1964 , to patent No.

(3) An application under subsection (2) of section 14 for the deletion of a reference inserted under subsection (1) of section 14 shall be accompanied by the prescribed fee or evidence of payment thereof, and shall state the number of the applicant's patent or application, the number of the patent to which reference has been directed under subsection (1) of section 14, and the facts (stated in full) relied upon in support of the application for deletion.

(4) In the application of this Rule and Rule 34 to proceedings subsequent to the grant of the patent, references to the patentee shall be substituted for references to the applicant.

ACCEPTANCE OF APPLICATION, ETC.

Putting applications in order for acceptance.

36. (1) The period of five years is hereby prescribed for the purposes of subsection (1) of section 17 as the period within which an application for the grant of a patent is to be put in order for acceptance.

(2) In any case in which the Controller is satisfied that because of circumstances outside the applicant's control information required under subsection 6 of section 7 or evidence required under subsection 6 of section 8 cannot be furnished before the expiry of the period specified in paragraph (1) or there is insufficient time for the examination required by the Act to be made or the results thereof to be dealt with, he may grant without fee such extension or series of extensions of the period specified in paragraph (1) as he shall think fit if a request for such extension is made before the expiry of the said period or of the last previous extension thereof.

(3) A notice under subsection (2) of section 17 requesting an extension of the period allowable under paragraph (1) or (2) of this Rule for putting an application in order shall be given on Form 3 in Schedule II, accompanied by the prescribed fee or evidence of payment thereof.

(4) A notice under the proviso to subsection (1) of section 18 requesting postponement of the acceptance of a complete specification to a date later than twelve months from the date of its filing, shall be given on Form 3 in Schedule II accompanied by the prescribed fee or evidence of payment thereof.

Acceptance of complete specification.

37. After the date of the publication of a complete specification the application and complete specification as originally filed and as accepted together with the provisional specification or specifications (if any) or the drawings and documents (if any) filed in pursuance of Rule 26 (g) may be inspected at the Office upon payment of the prescribed fee.

OPPOSITION TO GRANT OF PATENT.

Notice of opposition.

38. A notice of opposition to the grant of a patent shall be in duplicate and shall be accompanied by the prescribed fee, or evidence of payment thereof, and shall contain a statement of the grounds of opposition, including identification of all specifications and other documents relied upon, and shall be accompanied by a statement, in duplicate, setting out fully the nature of the opponent's interest, the facts upon which he relies, and the relief which he seeks. The name and address of the patent agent (if any) duly authorised to act shall be stated.

A copy of the notice and the accompanying statement shall be sent by the Controller to the applicant and the notice shall be open to public inspection.

Counterstatement.

39. Within three months from the receipt of such copies the applicant shall, if desirous of contesting the opposition, send to the Controller a counter-statement in duplicate setting out the grounds on which the opposition is contested and those on which he relies as supporting his application and what facts, if any, alleged in the notice of opposition, he admits. The counter-statement shall be accompanied by the prescribed fee, or evidence of payment thereof. The Controller shall on receipt of the counter-statement send the duplicate of the counter-statement to the opponent.

Evidence in support of opposition.

40. Within three months from his receipt of the copy of the counter-statement the opponent shall leave with the Controller such evidence as he may desire to adduce in support of his opposition and shall deliver to the applicant a copy thereof.

Evidence in support of application.

41. Within three months from the receipt of the copy of the opponent's evidence or, if the opponent does not file any evidence, within three months from the expiration of the time within which the opponent's evidence might have been filed, the applicant may file evidence in support of his case and shall deliver to the opponent a copy of the evidence.

Evidence in reply by opponent.

42. Within three months from the receipt of the copy of the applicant's evidence the opponent may file evidence confined to matters strictly in reply, and shall deliver to the applicant a copy thereof.

Further evidence.

43. No further evidence shall be filed by either party except by the leave or direction of the Controller and subject to such terms as to costs or otherwise as he may think fit.

Exhibits.

44. Where exhibits are filed or referred to by either party, a copy or impression of such exhibits shall be sent to the other party on his request and at his expense, or, if such copies or impressions cannot conveniently be furnished, the originals shall be left with the Controller in order that they may be open to inspection or, if this is impracticable, the other party shall be informed where the exhibits may be inspected. The original exhibits shall be produced at the hearing unless the Controller otherwise directs.

Documents.

45. (1) Copies of all documents, referred to in the notice of opposition or in any statement or evidence filed in connection with the opposition, authenticated to the satisfaction of the Controller, shall be furnished (in duplicate) for the Controller's use unless he otherwise directs. Such copies shall accompany the notice, statement or evidence in which they are referred to.

(2) Where a specification or other document in a foreign language is referred to, an additional copy of an attested translation thereof shall also be furnished.

Hearing.

46. (1) On completion of the evidence (if any), or at such other time as he may see fit, the Controller shall appoint a time for the hearing of the case, and shall give the parties at least ten days' notice of the appointment unless the parties consent to shorter notice.

(2) Within seven days from the receipt of the notice a party who intends to appear at the hearing shall so notify the Controller and shall pay the prescribed fee or furnish evidence of payment thereof.

(3) A party who fails to notify the Controller in accordance with this Rule may be treated as not desiring to be heard, and the Controller may act accordingly.

(4) If either party intends to refer at the hearing to any publication not already mentioned in the proceedings, he shall give to the other party and to the Controller at least ten days' notice of his intention, together with details of each publication to which he intends to refer.

(5) After hearing the party or parties desiring to be heard or, if neither party desires to be heard, then without a hearing, the Controller shall decide the case and notify his decision to the parties.

(6) A written statement of the grounds of a decision shall be furnished if application, accompanied by the prescribed fee, is made to the Controller within one month from the date of notification of the decision.

Notice of potential infringement.

47. If in consequence of the proceedings under section 19 the Controller directs that a reference to another patent shall be inserted in the applicant's specification under subsection (1) of section 14, the reference shall be as prescribed by Rule 35 (2).

Costs in uncontested cases.

48. If the applicant notifies the Controller that he does not desire to proceed with the application, the Controller, in deciding whether costs should be awarded to the opponent, shall consider whether proceedings might have been avoided if the opponent had given reasonable notice to the applicant before the opposition was filed.

Security for costs.

49. (1) Where a party giving notice of opposition neither resides nor carries on business in the State, the Controller may require him to give security for the costs of the proceedings before the Controller, in such form and for such amount as the Controller thinks fit.

(2) The Controller may at any stage in opposition proceedings require a party to give further security for costs.

Refusal of patent without opposition.

50. (1) If at any time after the acceptance of a complete specification and before the grant of the patent it comes to the notice of the Controller, otherwise than in consequence of proceedings in opposition to the grant, that the invention so far as claimed in any claim of the complete specification has been published in any specification or other document falling within subsection (1) of section 20, the applicant shall be so informed and shall be allowed a period of two months within which to submit such amendment of his specification as will be to the Controller's satisfaction.

(2) If the specification has not been amended to the Controller's satisfaction within the period allowed under paragraph (1), including any extension thereof which the Controller may allow, a time for hearing the applicant shall be appointed.

(3) After hearing the applicant, or without a hearing if the applicant has not attended or has notified that he does not desire to be heard, the Controller may prescribe or permit such amendment of the specification as will be to his satisfaction and may refuse to grant a patent unless the amendment is made or agreed to within a period of three months.

(4) The periods mentioned in paragraphs (1) and (3) may be extended if a request for such extension, accompanied by the prescribed fee or evidence of payment thereof, is made on Form 3 in Schedule II at any time within the extended period specified in the request, provided that the total extension of either period allowed under this provision shall not exceed six months.

MENTION OF INVENTOR AS SUCH.

Request under section 21 (3).

51. A request by the applicant for a patent, or, if the actual deviser of the invention or of a substantial part thereof is not the applicant or one of the applicants, by the applicant and the said deviser, under subsection (3) of section 21 shall be accompanied by the prescribed fee or evidence of payment thereof and shall state :--

(a) the number, date and title of the application for a patent;

(b) the name, address and nationality of the applicant(s);

(d) the circumstances relied upon to justify the request;

(e) the name and address of the patent agent (if any), duly authorised to act;

and shall declare that the application for the patent is a direct consequence of the person named as deviser being the inventor in the sense of being the actual deviser.

Claim under section 21 (4).

52. (1) A claim under subsection (4) of section 21 shall be accompanied by the prescribed fee or evidence of payment thereof and shall state :--

(a) the name, address and nationality of the claimant;

(b) the number, date and title of the application for a patent in question;

(d) the circumstances relied upon to justify the claim;

(e) the name and address of the patent agent (if any) duly authorised to act;

and shall declare that the claimant is the inventor in the sense of being the actual deviser of the invention or a substantial part thereof, and that the application for the patent is the direct consequence of his being such inventor.

(2) A copy of the claim and of the statement shall be sent by the Controller to every applicant for the patent (not being the claimant) and to any other person whom the Controller may consider to be interested and the claimant shall supply a sufficient number of copies for that purpose.

(3) The Controller may give such directions as he thinks fit with regard to the subsequent procedure. If a counter-statement is required, it shall be accompanied by the prescribed fee or evidence of payment thereof.

Extension of period for making request or claim.

53. An application under subsection (5) of section 21 for an extension of the period for making a request or claim shall be made on Form 3 in Schedule II accompanied by the prescribed fee or evidence of payment thereof.

Application for certificate under section 21 (8).

54. (1) An application for a certificate under subsection (8) of section 21 shall be accompanied by the prescribed fee or evidence of payment thereof and shall state :--

(a) the name, address and nationality of the person(s) applying for the certificate;

(b) the number, date and title of the application for a patent in question;

(c) the name of the person who has been mentioned under section 21 as the actual deviser of the invention or a substantial part thereof;

(d) the circumstances relied upon to justify the application for a certificate;

(e) the name and address of the patent agent (if any) duly authorised to act;

and shall declare that the person mentioned at (c) ought not to have been so mentioned.

(2) A copy of the application and of the statement shall be sent by the Controller to each patentee or applicant for the patent, to the person mentioned as the actual deviser, and to any other person whom the Controller may consider to be interested and the applicant shall supply a sufficient number of copies for that purpose.

(3) The Controller may give such directions as he thinks fit with regard to the subsequent procedure. If a counter-statement is required it shall be accompanied by the prescribed fee or evidence of payment thereof.

Terms of mention.

55. Any mention of an actual deviser as inventor may be made in the patent after the name of the Controller and on the complete specification, and may be in the form :

The inventor of this invention in the sense of being the actual deviser thereof within the meaning of section 21 of the Patents Act, 1964 , is .......... of..........

The inventor of a substantial part of this invention in the sense of being the actual deviser thereof within the meaning of section 21 of the Patents Act, 1964 , is.......... of..........

CHANGE OF APPLICANT, ETC.

Change of applicant for patent.

56. (1) A claim under subsection (1) of section 22 that an application for a patent shall proceed in the name of the claimant or in the names of the claimant and the applicant or the other joint applicant or applicants shall state :--

(a) the number, date and title of the application;

(b) the name of the applicant(s) for the patent;

(d) the name, address and nationality of the person or persons in whose name(s) it is requested that the application shall proceed;

(e) the nature, date of, and parties to the document by virtue of which the claimant claims to be entitled to proceed as applicant for the patent;

(f) the name and address of the patent agent (if any) duly authorised to act,

and shall be accompanied by a certified copy of the assignment or agreement upon which the claim is based and by the prescribed fee or evidence of payment thereof.

(2) The original assignment or agreement shall also be produced for the Controller's inspection, and the Controller may call for such other proof of title or written consent as he may require.

Disputes between co-applicants.

57. An application under subsection (5) of section 22 by a joint applicant for directions by the Controller shall state :--

(a) the number, date and title of the application for a patent in question;

(b) the name and address of the person seeking directions;

(d) the name and address of the patent agent (if any) duly authorised to act,

and shall be accompanied by the prescribed fee or evidence of payment thereof and a statement giving particulars of the matters in dispute, the facts upon which the applicant for directions relies, and the relief, by way of directions, sought.

(2) A copy of the application and statement shall be sent by the Controller to each other joint applicant and the person making the application under subsection (5) of section 22 shall supply a sufficient number of copies for that purpose.

GRANT OF PATENT, ETC.

Sealing of patent.

58. (1) A request for the sealing of a patent on an application shall be accompanied by the prescribed fee or evidence of payment thereof and shall state :--

(a) the name of the applicant(s);

(b) the number of the application;

(2) The period within which a request for the sealing of a patent may be made under proviso (a) to subsection (2) of section 23 shall be two months from the final determination of the proceedings.

(3) An application under subsection (3) of section 23 for the extension of the period for making a request for the sealing of a patent shall be made on Form 3 in Schedule II, accompanied by the prescribed fee or evidence of payment thereof. Such extension shall not be more than three months.

Form of patent.

59. A patent shall be in the form set out in Schedule III, which form may be varied to meet the circumstances of any case.

Amendment of patent.

60. An application under section 24 for the amendment of a patent shall state :--

(a) the name and address of the applicant;

(b) the number of the patent;

(d) the name, address and nationality of the person to whom the patent should have been granted; and

(e) the applicant's address for service in the State--

and shall be accompanied by :--

(f) the prescribed fee or evidence of payment thereof;

(g) the patent;

(h) evidence verifying the statements made in the application to justify the amendment of the patent.

RENEWAL FEES.

Period for payment.

61. (1) If it is desired, at the expiration of the fourth year from the date of a patent or of any succeeding year during the term of the patent, to keep the patent in force, the prescribed renewal fee shall be paid before the expiration of that year; Provided that, where a patent is sealed after the expiration of the fourth or any succeeding year, the fee may be paid at any time before the expiration of three months from the date of sealing the patent.

(2) All or any of the prescribed annual renewal fees may be paid in advance.

Extension of period.

62. A request under subsection (5) of section 26 for extension of the period for payment of any renewal fee shall be made on Form 3 in Schedule II accompanied by the prescribed fee or evidence of payment thereof.

Certificate of payment.

63. On due compliance with the terms of Rule 61 the Controller shall issue a certificate that the prescribed payment has been duly made.

Notice as to payment.

64. At any time not less than one month before the date when any renewal fee becomes due in respect of any patent, the Controller shall send to the patentee or patentees appearing in the register of patents at his or their address or addresses for service, or to the address of the person or persons who paid the last renewal fee, a notice reminding him or them of the date when such fee will become due, and of the consequences of the non-payment thereof.

EXTENSION OF TERM OF PATENT.

Petition.

65. A petition to the Controller under section 27 for extension of the term of a patent shall state :--

(a) the name, address and nationality of the petitioners(s);

(b) the number and title of the patent in question;

(d) the facts upon which the petitioner relies;

(e) the name and address of the patent agent (if any) duly authorised to act;

and shall be accompanied by the prescribed fee or evidence of payment thereof and by evidence verifying the statements made in the petition, including the balance sheet of expenditure and receipts in relation to the patent.

If so required by the Controller an additional copy of the petition and evidence shall be furnished.

Consideration by the Controller.

66. (1) If, upon consideration of the evidence, the Controller is not satisfied that a prima facie case for extension has been made out he shall notify the petitioner accordingly and unless within one month the petitioner requests to be heard in the matter, the Controller shall dismiss the petition.

(2) If the petitioner requests a hearing within the time allowed the Controller, after giving the petitioner an opportunity to be heard, shall determine whether the petition may proceed to advertisement or whether it shall be dismissed.

(3) Whenever the Controller decides that a prima faciecase for extension has been made out he shall advertise the petition in two issues of the Journal and the petitioner shall, within one month of the date of the first advertisement, notify any registered licensee under the patent of the advertisement.

Objection to extension.

67. (1) At any time within two months from the date of the second advertisement in the Journal, any person may oppose the petition by giving notice of objection to the grant of an extension.

(2) Such notice shall be furnished in duplicate and shall state :--

(a) the name and address of the opponent;

(b) the number of the patent in question;

(d) the name and address of the patent agent (if any) duly authorised to act;

and shall be accompanied by the prescribed fee or evidence of the payment thereof and by a statement in duplicate setting out fully the nature of the opponent's interest and the facts upon which he relies.

(3) A copy of the notice and the statement shall be sent by the Controller to the petitioner.

Further procedure.

68. (1) Upon notice of opposition being given the Controller shall send to the opponent a copy of the petition and accompanying evidence and the provisions of Rules 39 to 46 and 49 shall apply.

(2) If no notice of opposition is given or an opposition is dismissed wholly or in part, the Controller shall decide on the petition in accordance with subsection (6) of section 27.

PATENTS OF ADDITION.

Conversion of patent.

69. A request under subsection (2) of section 28 for the grant of a patent of addition in place of an independent patent shall be accompanied by the prescribed fee or evidence of payment thereof and the patent in question and shall state the name, address and nationality of the registered patentee.

RESTORATION OF LAPSED PATENTS.

Application for restoration.

70. (1) An application for restoration of a patent which has lapsed shall state :--

(a) the name and address of the applicant for restoration and the number of the patent in question;

(b) the amount of the renewal fee due;

(d) the circumstances which led to the failure to pay the fee;

(e) the name and address of the patent agent (if any) duly authorised to act,

and shall be accompanied by the prescribed application fee or evidence of the payment thereof and by evidence verifying any statement made in relation to the circumstances referred to in paragraph (d).

(2) If so required by the Controller, an additional copy of the application and accompanying evidence shall be furnished.

Consideration by Controller.

71. (1) If, upon consideration of the evidence, the Controller is not satisfied that a prima facie case for an order under section 29 has been made out, he shall notify the applicant accordingly and, unless within one month the applicant requests to be heard in the matter, the Controller shall refuse the application.

(2) If the applicant requests a hearing within the time allowed, the Controller, after giving the applicant an opportunity of being heard, shall determine whether the application may proceed to advertisement or whether it shall be refused.

Opposition to restoration.

72. (1) At any time within two months of the advertisement of the application under subsection (4) of section 29, any person may give notice of opposition thereto.

(2) Such notice shall be furnished in duplicate and shall state :--

(a) the name and address of the opponent;

(b) the number of the patent concerned;

(d) the name and address of the patent agent (if any) duly authorised to act;

(3) A copy of the notice and the statement shall be sent by the Controller to the applicant.

Opposition procedure.

73. Upon notice of opposition being given the Controller shall send to the opponent a copy of the application and accompanying evidence and the provisions of Rules 39 to 46 and 49 shall apply.

Action on restoration.

74. If the Controller decides to restore the patent he shall notify the applicant accordingly and require him to pay the unpaid renewal fees together with the prescribed additional fee.

Conditions of restoration.

75. For the protection of persons who have begun to avail themselves of a patented invention between the date when the patent ceased to have effect and the date of the application for its restoration every order of the Controller restoring a patent shall be subject to, and shall have effect as if it contained, the following conditions :--

(1) No action or other proceeding shall be commenced or prosecuted nor any damages recovered, in respect of any manufacture, use, or sale of the invention the subject of the patent in the interim period as hereinafter defined by any person not being a licensee under the patent at the date when it ceased to have effect, the , who after such date and before the , the date of the application, has made, used, exercised or sold the invention the subject of the patent or has manufactured or installed any plant, machinery or apparatus claimed in the specification of the patent or for carrying out a method or process so claimed. Any such person shall be deemed to have so acted with the licence of the patentee and shall thereafter be entitled to continue to make, use, exercise or sell the invention without infringement of the patent to the extent hereinafter specified that is to say :--

(a) in so far as the complete specification of the patent claims an article (other than plant, machinery or apparatus or part thereof as specified under head (b) hereof) and any article so claimed has been manufactured by him during the said interim period, that particular article may at all times be used or sold,

(b) in so far as the complete specification claims any plant, machinery or apparatus or part thereof for the production of an article, then any particular plant, machinery or apparatus or part thereof so claimed, which has been manufactured or installed by him during the said interim period, and the products thereof, may at all times be used or sold and so that in the event of any such plant, machinery, apparatus or part thereof being impaired by wear or tear or accidentally destroyed, a like licence shall extend to any replacement thereof and to the products of such replacement,

(c) in so far as the complete specification claims any process for the making or treating of any article or any method or process of testing, any particular plant, machinery or apparatus which during the said interim period has been manufactured or installed by him or exclusively or mainly used by him for carrying on such method or process may at all times be so used or continued to be so used and the products thereof may at all times be used or sold and so that in the event of any such plant, machinery or apparatus being impaired by wear or tear or accidentally destroyed a like licence shall extend to such method or process when carried on in any replacement of such plant, machinery or apparatus and to the products of the process so carried on.

(2) In the foregoing paragraph, " article " has the same meaning as in section 2 and " the interim period " means the period between the date when the patent ceased to have effect and the date of this Order.

RESTORATION OF LAPSED APPLICATION FOR PATENT.

Application for sealing.

76. (1) An application under subsection (2) of section 30 for the sealing of a patent shall state:--

(a) the name and address of the applicant(s) for the patent;

(b) the acceptance number of the application for the patent;

(d) the circumstances which led to the failure to make the request for sealing;

(e) the name and address of the patent agent (if any) duly authorised to act;

(2) If so required by the Controller, an additional copy of the application and accompanying evidence shall be furnished.

Procedure after application.

77. Upon an application for sealing being made, the procedure laid down in Rules 71 to 74 shall be followed, subject to the appropriate modifications.

Conditions of sealing.

78. For the protection of persons who have begun to avail themselves of an invention between the date when the time allowed by or under section 23 for making the prescribed request for sealing a patent expired, and the date of the application for an order for sealing the patent, every order of the Controller for the sealing of a patent made under section 30 shall be subject to, and shall have effect as if it contained, the conditions set out in Rule 75, there being substituted for references to the date when the patent ceased to have effect references to the date when the time allowed by or under section 23 for making the request for sealing expired.

AMENDMENT OF SPECIFICATION OR APPLICATION.

Application to amend under section 31.

79. (1) An application to amend an accepted complete specification under section 31 shall state :--

(a) the name and address of the applicant for a patent or the patentee;

(b) the number of the complete specification;

(d) the name and address of the patent agent (if any) duly authorised to act;

and shall declare that no action for infringement or proceeding before the Court for revocation of the patent (if granted) is pending;

and shall be accompanied by the prescribed fee or evidence of payment thereof.

(2) Subject to the proviso to subsection (3) of section 31, the application and the nature of the proposed amendment shall be advertised by publication in the Journal, and in such other manner, if any, as the Controller may in each case direct.

Opposition to amendment.

80. (1) Any person wishing to oppose an application under the preceding Rule shall, within one month from the date of the advertisement in the Journal, or such further period not exceeding three months from the said date as the Controller may in special cases allow, give notice to the Controller.

(2) Such notice shall be in duplicate and shall state :--

(a) the name and address of the opponent;

(b) the number of the specification in question;

(d) the name and address of the patent agent (if any) duly authorised to act;

and shall be accompanied by the prescribed fee or evidence of payment thereof and by a statement, in duplicate, setting out fully the nature of the opponent's interest, the facts upon which he relies, and the relief which he seeks.

(3) A copy of the notice and the statement shall be sent by the Controller to the applicant.

Procedure on opposition,

81. Upon such notice of opposition being given and a copy thereof sent to the applicant the provisions of Rules 39 to 46 and 49 shall apply.

Proposals for amendment.

82. Unless the Controller otherwise directs, every application or proposal for amendment of an accepted complete specification shall be accompanied by a copy of the specification and drawings as accepted, clearly showing in red ink the amendment sought.

Amendment of specification before acceptance.

83. An application for leave to amend a complete specification which has not been accepted, except when the amendment is made to meet an objection contained in an examiner's report or is shown to be necessary in consideration of the evidence under subsection (6) of section 8, shall state the number and date of the specification and the applicant's reasons for desiring to make the amendment and shall be accompanied by a copy of the specification showing the desired amendments in red ink, and by the prescribed fee or evidence of payment thereof.

Amendment of application.

84. (1) An application for leave to amend an application for a patent shall state the number and date of the application and the reasons for desiring to amend the application, and shall be accompanied by a copy of the original application form showing the desired amendment in red ink and by the prescribed fee or evidence of payment thereof.

(2) An application for leave to convert an application for a patent to a convention application may be made at any time before the expiry of the period prescribed in Rule 25.

Amended specification.

85. Where leave to amend a specification is given the applicant shall if the Controller so requires, and within a time to be fixed by him, file a new specification and drawings as amended, which shall be prepared in accordance with Rules 31 and 32.

Advertisement of amendment.

86. Particulars of all amendments of specifications allowed and made under section 31 shall be advertised forthwith in the Journal and in such other manner, if any, as the Controller may direct.

REVOCATION AND SURRENDER OF PATENT.

Revocation by the Controller.

87. (1) An application for the revocation of a patent under section 35 shall be made in duplicate and shall state :--

(a) the name and address of the applicant for revocation;

(b) the number of the patent in question;

(c) the grounds upon which the application is based, with identification of all specifications and other documents relied upon;

(d) the name and address of the patent agent (if any) duly authorised to act;

and shall be accompanied by :--

(a) a statement (in duplicate) setting out fully the nature of the applicant's interest, the facts upon which he relies, and the relief which he seeks;

(b) the prescribed fee or evidence of payment thereof;

(c) a declaration that no action for infringement or proceeding for the revocation of the patent is pending in any Court.

(2) A copy of the application and of the statement shall be sent by the Controller to the patentee and the application shall be open to public inspection.

Subsequent procedure.

88. Upon such application being made and a copy thereof sent to the patentee the provisions of Rules 39 to 47 and 49 shall apply with the substitution of references to the patentee for references to the applicant and of references to the applicant for references to the opponent.

Costs if patent surrendered.

89. If the patentee offers under section 36 to surrender his patent, the Controller, in deciding whether costs should be awarded to the applicant for revocation, shall consider whether proceedings might have been avoided if the applicant had given reasonable notice to the patentee before the application was filed.

Offer of surrender of patent.

90. (1) Notice to the Controller of an offer to surrender a patent shall state :--

(a) the name and address of the patentee;

(b) the number of the patent in question;

(d) the name and address of the patent agent (if any) duly authorised to act;

and shall be accompanied by a declaration that no action for infringement or proceeding for the revocation of the patent is pending in any Court.

(2) The Controller shall advertise the offer in the Journal.

Opposition to surrender of patent.

91. (1) At any time within one month from the advertisement any person may give notice of opposition to the Controller.

Such notice shall be in duplicate and shall state :--

(a) the name and address of the opponent;

(b) the number of the patent in question;

(d) the name and address of the patent agent (if any) duly authorised to act;

and shall be accompanied by a statement, in duplicate, setting out fully the nature of the opponent's interest, the facts upon which he relies and the relief which he seeks, and by the prescribed fee or evidence of payment thereof.

(2) A copy of the notice and of the statement shall be sent by the Controller to the patentee.

Subsequent procedure.

92. Upon such notice of opposition being given and a copy thereof sent to the patentee, the provisions of Rules 39 to 46 and 49 shall apply with the substitution of references to the patentee for references to the applicant.

VOLUNTARY ENDORSEMENT " LICENCES OF RIGHT ".

Application for endorsement.

93. An application for endorsement under subsection (1) of section 37 shall state :--

(a) the name and address of the applicant;

(b) the number of the patent in question;

and shall be accompanied by :--

(a) a declaration that the applicant is not precluded by contract from granting licences under the patent;

(b) evidence verifying this declaration;

(d) the prescribed fee or evidence of payment thereof.

Application for settlement of terms.

94. (1) An application under subsection (2) of section 37 for the settlement of the terms of a licence shall be made in duplicate and shall state :--

(a) the name and address of the applicant;

(b) the number of the patent in question;

(d) whether an Order for the exchange of an existing licence for a licence under the endorsement " Licences of Right " is required;

(e) the name and address of the patent agent (if any) duly authorised to act;

and shall be accompanied by a statement, in duplicate, setting out fully the facts upon which the applicant relies, and the terms of the licence which he is prepared to accept or grant, and by the prescribed fee or evidence of payment thereof.

(2) A copy of the application and statement shall be sent by the Controller to the patentee or the person requiring a licence, as the case may be, who, if he does not agree to the terms set out in the statement, shall, within six weeks of the receipt of such copies, file a counter-statement setting out fully the grounds of his objection and send a copy thereof to the applicant. If a counter-statement is filed, it shall be accompanied by the prescribed fee or evidence of the payment thereof.

(3) The Controller shall give such directions as he may think fit with regard to the filing of evidence and the hearing of the parties.

Cancellation of endorsement.

95. (1) An application under subsection (1) of section 38 for the cancellation of an endorsement shall state :--

(a) the name and address of the applicant;

(b) the number of the patent in question;

and shall be acompanied by :--

(a) a declaration that there is no existing licence under the patent or that all licensees consent to the application;

(b) evidence verifying the said declaration;

(c) the prescribed application fee and the balance of all renewal fees which would have been payable if the patent had not been endorsed, or evidence of the payment of such fees.

(2) An application under subsection (2) of section 38 for the cancellation of an endorsement shall be made within two months after the patent has been endorsed and shall state :--

(a) the name and address of the applicant;

(b) that the endorsement is and was at the time of the endorsement contrary to a contract in which the applicant is interested;

and shall be accompanied by a statement, in duplicate, setting out fully the nature of the applicant's interest and the facts upon which he relies, and by the prescribed fee or evidence of payment thereof.

Opposition to cancellation.

96. (1) Every application under subsection (1) or (2) of section 38 shall be advertised in the Journal, and the period within which notice of opposition to the cancellation of an endorsement may be given under subsection (5) of section 38 shall be one month after the advertisement.

(2) Notice of opposition shall be given in duplicate and shall state :--

(a) the name and address of the opponent;

(b) the number of the patent in question;

and shall be accompanied by a statement, in duplicate, setting out fully the nature of the opponent's interest (if he is not the patentee) and the facts upon which he relies, and by the prescribed fee or evidence of payment thereof.

Subsequent procedure.

97. (1) A copy of the notice and of the statement shall be sent by the Controller to the applicant for cancellation of the endorsement and thereafter the Controller may give such directions as he thinks fit with regard to the subsequent procedure. If the applicant is required to file a counter-statement it shall be accompanied by the prescribed fee or evidence of payment thereof.

(2) Where the Controller cancels the endorsement pursuant to subsection (3) of section 38, the patentee shall, within one month from the cancellation of the endorsement, pay or give evidence of payment of fees to the amount of the balance of all renewal fees which would have been payable if the patent had not been endorsed.

COMPULSORY LICENCE, ENDORSEMENT AND REVOCATION.

Application for licence, etc.

98. An application for a compulsory licence or for endorsement of a patent under subsection (1) of section 39 or subsection (1) of section 41 or for revocation of the patent under subsection (1) of section 43 shall state :--

(a) the name and address of the applicant;

(b) the number of the patent in question;

(c) whether the relief sought is an individual licence, or endorsement of the patent " licences of right ", or revocation of the patent;

(d) the nature of the applicant's interest, the facts upon which he relies, and the grounds upon which the application is made;

(e) the name and address of the patent agent (if any) duly authorised to act;

and shall be accompanied by evidence verifying the statements in the application, and by the prescribed fee or evidence of payment thereof.

Patents for food or medicine.

99. An application for a licence under subsection (1) of section 42 shall state :--

(a) the name and address of the applicant;

(b) the number of the patent in question;

(c) whether the applicant intends to make, use, exercise or vend the invention as a food or medicine, for the purposes of the production of food or medicine, or as part of a surgical or remedial device;

(d) the nature of the applicant's interest and the facts upon which he relies;

(e) the name and address of the patent agent (if any) duly authorised to act;

and shall be accompanied by evidence verifying the statements in the application, and by the prescribed fee or evidence of payment thereof.

Consideration by Controller.

100. (1) If upon consideration of the evidence furnised under Rule 98 or 99 the Controller is not satisfied that a prima facie case has been made out for the making of an order, he shall notify the applicant accordingly, and unless within one month the applicant requests to be heard in the matter the Controller shall refuse the application.

Opposition to the application.

101. (1) The time within which notice of opposition under subsection (3) of section 44 may be given shall be two months after the advertisement of the application under subsection (2) of section 44.

(2) Notice of opposition to an application under Rule 98 or 99 shall state :--

(a) the name and address of the opponent;

(b) the number of the patent in question;

(d) the name and address of the patent agent (if any) duly authorised to act;

and shall be accompanied by evidence verifying the statements in the notice, and by the prescribed fee or evidence of payment thereof.

(3) The opponent shall within one month serve a copy of the notice and of the evidence on the applicant.

Subsequent procedure.

102. Thereafter the Controller may give such directions as he thinks fit with regard to the subsequent procedure. If a counter-statement is required, it shall be accompanied by the prescribed fee or evidence of the payment thereof.

DISPUTES AS TO INVENTIONS.

Directions to co-owners.

103. (1) An application for directions under subsection (1) or (2) of section 52 by a co-grantee or co-proprietor of a patent shall state :--

(a) the name and address of the applicant;

(b) the number of the patent in question;

(d) the name and address of the patent agent (if any) duly authorised to act;

and shall be accompanied by a statement setting out fully the facts upon which the applicant relies, and by the prescribed fee or evidence of payment thereof.

(2) A copy of the application and of the statement shall be sent by the Controller to each other person registered as grantee or proprietor of the patent and the applicant shall supply a sufficient number of copies for that purpose.

(3) Thereafter the Controller may give such directions as he thinks fit with regard to the subsequent procedure. If a counter-statement is required, it shall be accompanied by the prescribed fee or evidence of the payment thereof.

Inventions made by employees.

104. (1) An application under subsection (1) of section 53 to determine a dispute as to rights in an invention shall be in duplicate and shall state :--

(a) the name and address of the applicant;

(b) the number and date of the patent or application for a patent in question;

(d) the name and address of the patent agent (if any) duly authorised to act;

and shall be accompanied by a statement, in duplicate, setting out fully the facts of the dispute and the relief sought, and by the prescribed fee or evidence of payment thereof.

(2) A copy of the application and of the statement shall be sent by the Controller to the other party to the dispute.

Entries in register.

105. (1) Upon the sealing of a patent the Controller shall cause to be entered in the register the name, address and nationality of the grantee as the patentee thereof, the title of the invention, the date of the patent, and the date of the sealing thereof, together with the address for service.

(2) The Controller may at any time enter in the register such other particulars as he may deem necessary.

Change of name, etc. in register.

106. (1) A request for the alteration of a name or nationality or an address or an address for service in the register shall state :--

(a) the name and address of the person making the request;

(b) the number of the patent in question;

and shall be accompanied by the prescribed fee or evidence of payment thereof and by evidence as to the alteration if the latter concerns the name or nationality.

(2) If the Controller is satisfied that the request may be allowed, he shall cause the register to be altered accordingly.

Change of title or interest.

107. (1) An application for the registration of the title of any person becoming entitled by assignment, transmission or operation of law to a patent or a share in a patent, or becoming entitled by virtue of a mortgage, licence or other instrument to any other interest in a patent, shall state :--

(a) the name and address of the applicant;

(b) the number of the patent in question;

(d) the name, address and nationality of the person whose title or interest is to be entered in the register;

(e) whether the person named at (d) is to be entered as the proprietor or co-proprietor of the patent, or as the holder of a licence, mortgage or other interest under the patent;

(f) the nature and particulars (date, parties to the agreement, etc.) of the document upon which the claim of the person mentioned at (d) is based;

(g) the name and address of the patent agent (if any) duly authorised to act;

and shall be accompanied by the document mentioned at (f) (unless it is a matter of record in the State) and a certified copy of the said document, and by the prescribed fee or fees or evidence of payment thereof.

(2) Upon request the Controller may in his discretion waive the production of the actual document mentioned at (f), and he may require the production of the patent and of such additional proof of title and consent as he thinks fit.

(3) The application shall, wherever feasible, be signed jointly by the persons mentioned at (c) and (d).

(4) When the applicant does not claim to be entitled under any document or instrument which is capable in itself of furnishing proof of his title, he shall, unless the Controller otherwise directs, either upon or with the application, state a case setting forth the full particulars of the facts upon which his claim is based. Such case shall be verified by a statutory declaration if the Controller so requires.

Entry of payment of renewal fees.

108. Upon the issue of a certificate of payment under Rule 63 the Controller shall enter in the register the fact that the fee has been paid, and the date of payment as stated on the certificate.

Cancellation of mortgage or licence entry.

109. (1) On the application of the patentee, licensee, or other person registered as having an interest, and payment of the prescribed fee, the Controller may, if satisfied as to the facts, cancel the entry of a mortgage, licence or other interest in the register.

(2) The Controller may require such evidence as he thinks fit as to the circumstances in which the application is made, and may prescribe such procedure as he thinks fit for safeguarding the interest of the person who held the said interest.

Rectification of register.

110. (1) An application to the Controller under subsection (6) of section 65 for the rectification of the register shall state :--

(a) the name and address of the applicant;

(b) the number of the patent in question;

(d) the name and address of the patent agent (if any) duly authorised to act;

and shall be accompanied by a statement setting out fully the nature of the applicant's interest and the facts upon which he relies, and by the prescribed fee or evidence of payment thereof.

(2) A copy of the application and statement shall be sent by the Controller to each person who appears to him, from the register or otherwise, to be interested in the application, and the applicant shall supply a sufficient number of copies for that purpose.

(3) At any time, within two months from the date of such notification by the Controller, any such interested person may give notice to the Controller of opposition to the application. Such notice shall set out fully the nature of the opponent's interest and the facts upon which he relies, and shall be accompanied by the prescribed fee or evidence of payment thereof.

(4) Thereafter the Controller may give such directions as he thinks fit with regard to subsequent procedure. If a counter-statement is required, it shall be accompanied by the prescribed fee or evidence of payment thereof.

Inspection of register.

111. The register shall be open to the inspection of the public, on payment of the prescribed fee, on every day on which the Office is open to the public during the time it is so open except at such times as the register is required for any purpose of official use.

MISCELLANEOUS.

Publication of inventions at exhibitions.

112. Notice to the Controller under subsection (2) of section 48 of an intention to exhibit or publish an invention at an international exhibition shall be accompanied by the prescribed fee, or evidence of payment thereof, and by a brief description of the invention and any drawings, sketches or specimen necessary for identifying the invention in the event of a subsequent application for a patent.

Correction of clerical errors.

113. (1) An application for the correction of an error under section 66 shall state :--

(a) the name and address of the applicant and his interest in the patent or application for a patent in question;

(b) the number and date of the patent or application for a patent;

(d) the name and address of the patent agent (if any) duly authorised to act;

and shall be accompanied by the prescribed fee or evidence of payment thereof.

(2) Where, in accordance with subsection (3) of section 66, a hearing is appointed, at least ten days' notice of the appointment shall be given to the patentee or the applicant for a patent and to any other person to whom notice of the proposed correction has been given by the Controller.

Certificate of Controller.

114. A request for a certificate of the Controller shall be accompanied by the prescribed fee or evidence of payment thereof and shall state :--

(a) the name and address of the person making the request;

(b) particulars of the entry, matter or thing which the Controller is requested to certify;

(d) the purpose for which the copies (if any) are required.

Copies of documents.

115. A copy of any entry in the register, or a copy of, or extract from, a specification, or other document kept in the Office and open to public inspection or from any index of specifications open to public inspection but not accepted, may be furnished by the Controller on payment of the prescribed fee.

Requests for information.

116. (1) A request under section 68 for information relating to any patent or application for a patent may be made

(a) as to when a complete specification is or will be published or accepted, or when an application for a patent has become void,

(b) as to when a patent has been sealed or when the time for requesting sealing has expired,

(d) as to when any application is made or action taken involving an entry in the register or advertisement in the Journal,

(e) for the result of a search made under sections 12 and 13 including particulars of prior publications brought to the notice of the Controller by the information or evidence submitted under subsection (6) of section 7 and subsection (6) of section 8,

(f) as to the form of evidence submitted under subsection (6) of section 8:

Provided that information as to items (e) and (f) shall not be furnished until the complete specification of the application in question has been accepted under section 18 or published under Rule 117.

(2) The Controller may also, on request, furnish information in relation to

(a) the registration of a design ;

(b) the registration of a trade mark or the acceptance of an application for the registration of a trade mark.

(3) Any such request shall relate to one item of information only and shall be accompanied by the prescribed fee or evidence of payment thereof.

Publication of specifications.

117. (1) Subject to Rule 119, any complete specification which has not been accepted by the expiry of a period of eighteen months from the date when the application was made or was deemed to have been made or, in the case of a Convention application, from the earliest priority date claimed, shall be placed open to public inspection at the Office upon the expiry of the said period, unless the application pursuant to which the specification was filed has previously been abandoned. The Controller shall give notice in the Journal that the specification has been so placed open.

(2) Subject to Rule 119, any complete specification which has not been accepted may be placed open to public inspection at the Office on the request of the applicant at any time before the expiry of the period referred to in the preceding paragraph if, but only if, the application pursuant to which the specification was filed is at the same time formally abandoned. The Controller shall give notice in the Journal that the specification has been so placed open.

Issue of duplicate patent.

118. An application under section 70 for a duplicate patent shall state :--

(a) the number, date and title of the patent in question;

(b) the name and address of the grantee of the patent;

(d) the address to which the patent is to be sent (if different from that at (b) );

and shall be accompanied by evidence verifying the statements made in the application, and by the prescribed fee or evidence of the payment thereof.

SECRET PATENTS.

Proceedings after assignment to Minister.

119. When under the provisions of section 90 the benefit of an invention relating to instruments or munitions of war has been assigned to the Minister for Defence and the application for a patent is accompanied by a certificate from the Minister for Defence that in the interests of the public service the particulars of the invention and of the manner in which it is to be performed should be kept secret, the Controller shall not communicate the application or any documents relating thereto to any member of his staff other than a special examiner who shall make the investigations and reports required or permitted by the Act to be made by an examiner in the case of other applications, and the evidence referred to in subsection (6) of section 8 shall not be required.

Unless and until such invention is re-assigned to the inventor by the Minister for Defence:--

(1) no copy of any specification or any other document or drawing relating thereto shall in any manner whatever be published or open to the inspection of the public;

(2) the application for the patent, and the acceptance of any specification relating to the invention shall not be advertised, nor shall the grant of the patent for such invention be open to opposition under section 19, but the Controller shall cause a patent to be sealed in respect of every such invention as soon as may be after the acceptance of the complete specification relating thereto,

(3) every such secret patent shall be registered in a confidential register at the Office and no details or particulars relating thereto shall at any time be published as required by the Act for ordinary patents, nor shall, any entry be made in the ordinary Register of Patents in respect of any such patent or any assignment thereof,

(4) so long as the certificate of the Minister for Defence is in force no fees shall be payable in respect of any secret patent and every such patent, notwithstanding the nonpayment of such fees, shall remain in force for the full period of 16 years from its date.

Certificate of secrecy.

120. When an application has been made otherwise than as provided by the last preceding Rule for a patent for an invention, and such application is still pending, and a certificate under subsection (3) of section 90 is furnished to the Controller by the Minister for Defence, the provision of such Rule shall, so far as is practicable having regard to the date of such certificate, apply to such application and to all documents relating thereto.

Re-assignment to patentee.

121. In the event of any secret patent being reassigned to the inventor by the Minister for Defence, it shall be removed from the confidential register of secret patents and all fees that would have been payable thereafter if it had not been a secret patent shall be payable in respect thereof and the patent shall remain in force only for the same term and subject to the same conditions as to payments of fees and otherwise as if it had never been a secret patent.

APPLICATIONS TO AND ORDERS OF COURT.

Notice of application to Court.

122. Every application to the Court under the Act or in relation to any other business which is by law made a function of the Controller or the Office shall be served on the Controller.

Notice of Order of Court.

123. When an Order has been made by the Court in any matter under the Act or in relation to any other business which is by law made a function of the Controller or the Office the person in whose favour such Order has been made or, if more than one, such person as the Controller may direct, shall forthwith leave at the Office an office copy of such Order together with the prescribed fee (or evidence of payment thereof) for any necessary entry or alteration in the register. The Controller shall thereupon make any necessary alteration or rectification of the register or enter the purport of the Order in the register or make or permit such other alteration or take such proceedings as may be necessary to give effect to the Order.

Revocation of existing Rules. Transitional provisions.

124. (1) Subject to paragraph (2) of this Rule, the Rules specified in Schedule IV are hereby revoked except in so far as they relate to designs.

(2) The said Rules shall continue to apply in relation to any matter to which, by virtue of the Second Schedule to the Act, the provisions of the Act of 1927 shall continue to apply.

SCHEDULE I.

FEES PAYABLE.

	£	s.	d.
1. On application for a patent, Rule 26 (1)	2	0	0
2. On convention application for a patent, Rule 26 (1) and section 7 (5)
In respect of each application for protection in a convention country	2	0	0
3. On filing provisional specification, Rule 26 (1)	Nil.
4. On filing complete specification, Rule 26 (1)	8	0	0
5. On application for extension of any of the periods allowed under Rules 26 (2), 27 (2), 34 (5), 35 (1) and 50 (4)
For each month of extension	1	0	0
6. On application for extension of time for filing complete specification, Rule 28
For each month of extension	3	0	0
7. On application for post-dating under section 11 (3)
For each month	3	0	0
8. On request to the Controller to state grounds of his decision in any ex parte proceedings, Rule 19 (2)	2	0	0
9. On application for deletion of a reference, Rule 35 (3)	2	0	0
10. On application for extension of the period for putting an application in order, Rule 36 (3)
For each month of extension	2	0	0
11. On application for postponement of acceptance of complete specification, Rule 36 (4)
For each month of extension	2	0	0
12. On notice of opposition to the grant of a patent, Rule 38	2	0	0
13. On filing counter-statement in any inter partes proceeding, Rule 39 and Rules dependent thereon	2	0	0
14. On notice of desire to be heard in any inter partes proceeding by Controller, Rule 46 (2) and Rules dependent thereon
By each party	3	0	0
15. On request to the Controller to state grounds of his decision in any inter partes proceeding, Rule 46 (5) and Rules dependent thereon	3	0	0
16. On request under section 21 (3), Rule 51, or claim under section 21 (4), Rule 52	1	0	0
17. On application for extension of period under section 21 (5), Rule 53	1	0	0
18. On application for certificate under section 21 (8), Rule 54	2	0	0
19. On making claim under section 22 (1) for change of applicant, Rule 56	2	0	0
20. On application for directions under section 22 (5), Rule 57	5	0	0
21. On request for the sealing of a patent, Rule 58 (1)	3	0	0

	£	s.	d.
22. On application for extension of time for the sealing of a patent, Rule 58 (3)
For each month	2	0	0
23. On application for amendment of patent under section 24, Rule 60	5	0	0
24. For renewal of a patent, Rule 61
Before the expiry of the 4th year from the date of the patent and in respect of the 5th year	7	0	0
Before the expiry of the 5th year from the date of the patent and in respect of the 6th year	8	0	0
Before the expiry of the 6th year from the date of the patent and in respect of the 7th year	9	0	0
Before the expiry of the 7th year from the date of the patent and in respect of the 8th year	10	0	0
Before the expiry of the 8th year from the date of the patent and in respect of the 9th year	12	0	0
Before the expiry of the 9th year from the date of the patent and in respect of the 10th year	14	0	0
Before the expiry of the 10th year from the date of the patent and in respect of the 11th year	16	0	0
Before the expiry of the 11th year from the date of the patent and in respect of the 12th year	18	0	0
Before the expiry of the 12th year from the date of the patent and in respect of the 13th year	20	0	0
Before the expiry of the 13th year from the date of the patent and in respect of the 14th year	20	0	0
Before the expiry of the 14th year from the date of the patent and in respect of the 15th year	22	0	0
Before the expiry of the 15th year from the date of the patent and in respect of the 16th year	22	0	0
25. On application for extension of period for payment of renewal fees, Rule 62
For the first month	2	0	0
For the second month	2	0	0
For the third month	2	0	0
For the fourth month	4	0	0
For the fifth month	4	0	0
For the sixth month	4	0	0
26. On petition to Controller for extension of term of a patent, Rule 65	10	0	0
27. On opposition to extension of term, Rule 67 (2)	2	0	0
28. On application for grant of a patent of addition in place of an independent patent, Rule 69	5	0	0
29. On application for restoration of a patent, Rule 70	15	0	0
30. On opposition to restoration of a patent, Rule 72	2	0	0
31. Additional fee on restoration of a patent, Rule 74	5	0	0
32. On application for restoration of an application for a patent, Rule 76	15	0	0
33. On opposition to restoration of application for a patent, Rule 77	2	0	0
34. Additional fee on restoration of an application for a patent, Rule 77	5	0	0

	£	s.	d.
35. On application to amend a specification
Before acceptance of specification, Rule 83	2	0	0
After acceptance but before sealing, Rule 79	3	0	0
After sealing, Rule 79	5	0	0
36. On opposition to amendment of a specification, Rule 80	2	0	0
37. On application to amend an application for a patent, Rule 84	2	0	0
38. On application for revocation of patent under section 35, Rule 87	2	0	0
39. On opposition to surrender of patent, Rule 91	2	0	0
40. On application under section 37 for endorsement of patent "Licences of Right", Rule 93	5	0	0
41. On application for settlement of terms, Rule 94	5	0	0
42. On application for cancellation of endorsement "Licences of Right", Rule 95	5	0	0
43. On opposition to cancellation of endorsement "Licences of Right", Rule 96	2	0	0
44. On application for compulsory licence or endorsement under section 39, Rule 98	5	0	0
45. On application for compulsory licence under section 42, Rule 99	5	0	0
46. On application for revocation of a patent under section 43, Rule 98	5	0	0
47. On opposition to compulsory licence, endorsement or revocation of a patent under section 44 (3), Rule 101	2	0	0
48. On notice of intention to exhibit or publish under section 48 (2), Rule 112	2	0	0
49. On application for directions to co-owners under section 52, Rule 103	5	0	0
50. On application to determine a dispute under section 53, Rule 104	5	0	0
51. On application to alter name or nationality or address or address for service in register, Rule 106
For each patent	0	5	0
52. On application to register a subsequent proprietor of, or a mortgage, licence or other instrument concerning a patent, or of, or concerning, two or more patents standing in the same name and where the change of title or interest is the same in each case, Rule 107
(a) If made within six months from the date of acquisition of proprietorship or interest
(i) For one patent	2	0	0
(ii) For every other patent included in the application	0	10	0
(b) If made after expiration of six months but within twelve months from the date of acquisition of proprietorship or interest
(i) For one patent	4	0	0
(ii) For every other patent included in the application	0	10	0

	£	s.	d.
(c) If made after expiration of twelve months but within twenty-four months from the date of acquisition of proprietorship or interest
(i) For one patent	6	0	0
(ii) For every other patent included in the application	0	10	0
(d) If made more than twenty-four months after the date of acquisition of proprietorship or interest
(i) For one patent	8	0	0
(ii) For every other patent included in the application	0	10	0
53. On application for the cancellation of an entry in the register of patents, Rule 109	1	0	0
54. On application to the Controller for rectification of the register of patents under section 65, Rule 110	3	0	0
55. On opposition to rectification by the Controller of the register of patents, Rule 110	2	0	0
56. On application to correct a clerical error, Rule 113
(a) Up to sealing of the patent	0	10	0
(b) After sealing of the patent	1	0	0
57. For certificate of Controller other than a certificate under Item 58, Rule 114	1	0	0
58. For certifying office copies, MSS., typed, printed or photographic, Rule 114, each	0	10	0
59. On request for information within the year following the date of request, Rule 116
For each separate item	1	0	0
60. On application for a duplicate patent, Rule 118	5	0	0
61. On lodgment of notice of Order of Court, Rule 123	1	0	0
62. For typed copies of documents, Rule 115
For each 100 words or less	0	3	0
63. For photographic copies of documents, Rule 115
For each foolscap sheet	0	1	0
64. For inspection of a register or other document or thing open to public inspection, Rules 37, 111 and 117
For every quarter of an hour	0	3	0
65. On application for insertion of notice in the journal for the purposes of section 13 (7) of the Copyright Act, 1963	1	0	0

SCHEDULE II

Form No. 1.

APPLICATION FOR PATENT.

I/We the undersigned (1)............................................................ ............................................................ .............................................

acting	{	in my/our own name(s) ............................................................ .............
		on behalf of (2) ............................................................ ............................
............................................................ ............................

hereby make application for a patent for the invention described in the accompanying
	{	provisional specification (and drawings) and entitled ...............
	complete

............................................................ ............................................................ ............................................................ .........

I/We the applicant(s)		claim(s) to be the true (and first) inventor(s) of the invention
		claim the following of us (them), namely
		.......................................................
		to be the true and first inventor(s)
		believes ................................................
		to be the true and first inventor(s)
		claim(s) to be the	{	assignee(s)	{
			personal	of the
				representatives		inventor
		by virtue of (3) ............................................................ .........................
	............................................................ ............................................................ .

I/We request that the patent may be granted as a (4) ............................................................ ...............

to Patent (5)	{	No. ............................................................ .....................................
Application No. .................... Dated.......................................

(6) ............................................................ ........................................................

Dated this.................................. day of.................................. 19

................................. (Signature)

List of documents accompanying this application

............................................................ ........

............................................................ .......

N.B. Delete where not applicable or required.

Instructions--

Form No. 1.

INSTRUCTIONS.

(1) Give the following particulars :

(a) When this form is signed by the applicant(s) here insert his/their first names, surname(s), full address(es) and nationality(ies), or the name and full address where the applicant is not a physical person.

(b) When the form is signed by a nominee of the applicant(s) here insert the first names, surname and full address of the nominee.

Note : Nominees cannot apply in certain countries.*

(2) In the case (1) (b), insert here the particulars at (1) (a).

(3) Here insert particulars of the assignment or other document.

(4) Here indicate the nature of the protection applied for, e.g., independent patent, patent of importation, patent for an improvement, patent or certificate of addition.

(5) In the case of a divisional application or where otherwise applicable, insert here the number of the related patent, or, where the related patent application is still pending, the number and date of such application.

(6) Insert here, where necessary, any other relevant particulars such as the authorisation of a patent agent in the country in which the application is made, or, if no such patent agent is appointed, an address for service in that country.

*Nominee applications are not accepted in the State.

Form No. 2.

CONVENTION APPLICATION FOR PATENT.

I/We the undersigned (1) ............................................................ ....................................................

............................................................ ............................................................ ......................................

............................................................ ............................................................ ........................................

acting	{	in my/our own name(s) ........................................
		on behalf of (2) ............................................................ .....................
............................................................ ...............................................

hereby declare that (an) application(s) for protection for an invention or inventions has(ve) been made in the following country(ies) on the following date(s), namely:--

in ............................................................ ................ on ............................................................ ................

by ............................................................ ............................................................ .....................................

in ............................................................ ................ on ............................................................ ................

by ............................................................ ............................................................ .....................................

and that the said application or each of the said applications was the first application in a Convention country.

I am/We are the assignee(s) of the said .................................. or the personal representative(s) of the said ................................ by virtue of (3) ........................................................

I/We request that a patent may be granted with priority founded on the above-mentioned application(s) in (a) Convention country(ies) for the invention described in the accompanying specification (and drawings) and entitled ........

I/We request that the patent may be granted as a (4) ............................................................ ............

to Patent (5)	{	No. .....................................................
Application No. .................... Dated....................

(6) ............................................................ .......................................................

............................................................ ............................................................

Dated this ........................................... day of ........................................... 19.......

..................................................... (Signature)

List of documents accompanying this application :

............................................................ ...

N.B. Delete where not applicable or required.

Instructions--

Form No. 2.

INSTRUCTIONS.

(1) Give the following particulars :--

(b) When the form is signed by a nominee of the applicant(s) here insert the first names, surname and full address of the nominee.

Note : Nominees cannot apply in certain countries.*

(2) In the case (1) (b), insert here the particulars at (1) (a).

(3) Here insert particulars of the assignment or other document.

(4) Here indicate the nature of the protection applied for, e.g., independent patent, patent of importation, patent for an improvement, patent or certificate of addition.

(6) Insert here, where necessary, any other relevant particulars such as the authorisation of a patent agent in the country in which the application is made, or if no such patent agent is appointed, an address for service in that country.

*Nominee applications are not accepted in the State.

Form No. 3.

PATENTS ACT, 1964 .

Form of application for the extension of any one of the periods listed below, for taking action in respect of a patent or an application for a patent.

(a) Application No. ..........................

Patent No. ......................................................

I (We) (b) ............................................................ ............................................................ ........

............................................................ ............................................................ ...............................................

enclose the prescribed fee (Item No. (c) ..........) or evidence of payment

thereof and apply for (d) .................... month(s) extension of time for the following purpose

(e) ............................................................ ............................................................ .............

............................................................ ............................................................ ...................................

Dated this ......................................... day of .................................................. 19..

Signed (f) ....................

Rule 26. Period for filing documents with application.

Rule 27. Period for filing evidence of novelty.

Rule 28. Period for filing complete after provisional specification.

Rule 34. Period for meeting objection of prior claiming.

Rule 35. Period for meeting objection of potential infringement.

Rule 36. Period for putting application in order.

Rule 36. Period of postponement of acceptance of application.

Rule 50. Period for meeting objection of prior publication.

Rule 53. Period for request or claim for mention as inventor.

Rule 58. Period for payment of sealing fee.

Rule 62. Period for payment of renewal fee.

(a) Complete whichever is applicable.

(b) Insert full name of applicant.

(d) Insert the period applied for.

(e) State purpose for which the extension is required.

(f) To be signed by applicant or his agent.

To the Controller of Patents, Designs and Trade Marks,

45 Merrion Square,

Dublin 2

SCHEDULE III.

PATENT NO.

WHEREAS

, hereinafter called the applicant, has pursuant to the Patents Act, 1964 , applied for the grant of a patent in respect of an invention entitled and particularly described in the applicant's complete specification and has complied with the requirements of the said Act.

NOW THEREFORE this patent is granted to the said applicant in respect of the said invention and shall, subject to the provisions of the said Act, operate and have effect during the period of sixteen years from the day of 19

(a) to confer on the applicant and the applicant's executors, administrators, successors and assigns (hereinafter collectively referred to as the grantee) the full, sole, and exclusive right, power and authority by the grantee and the grantee's agents or licensees at all times so long as the patent remains in force to make, use, exercise, and vend in Ireland the invention in respect of which the patent is granted ;

(b) to confer on the grantee the sole right to have and enjoy the whole profit and advantage from time to time accruing by reason of the said invention during such period as the patent remains in force ;

(c) to prohibit all persons whatsoever in Ireland while the patent remains in force from making use of or putting in practice the said invention or any part thereof, or in anywise imitating the same, or in anywise representing or pretending themselves to be the inventors of the said invention or of the said invention with any addition thereto or subtraction therefrom without a consent, licence or agreement in writing under the hand and seal of the grantee ;

(d) to make all persons who, while the patent remains in force, shall, in Ireland in anywise infringe any right, power or authority expressed to be hereby conferred on the grantee or do any act, matter or thing the doing of which is expressed to be hereby prohibited, answerable according to law to the grantee for such infringement or the doing of such act, matter or thing.

IN WITNESS WHEREOF I have caused my official seal to be hereunto affixed the day of 19 .

Controller of Patents, Designs and Trade Marks.

SCHEDULE IV.

RULES REVOKED.

Year and Statutory Instrument or Statutory Rule and Order Number	Title
1927, No. 78	Industrial Property Rules, 1927
1928, No. 77	Industrial Property (Amendment) Rules (No. 2), 1928
1929, No. 50	Industrial Property (Amendment) Rules (No. 3), 1929
1939, No. 51	Industrial Property (Amendment) Rules (No. 5), 1939
1954, No. 56	Industrial Property (Amendment) Rules (No. 7), 1954
1955, No. 116	Industrial Property Rules, 1927 (Amendment) Rules, 1955
1956, No. 315	Industrial Property Rules, 1927 (Amendment) Rules, 1956
1958, No. 155	Industrial Property Rules, 1927 (Amendment) Rules, 1958
1964, No. 176	Industrial Property Rules, 1927 (Amendment) Rules, 1964

GIVEN under my Official Seal this 23rd day of December, 1965.

PADRAIG S. Ó HIRIGHILE

Minister for Industry and Commerce.

The Minister for Finance hereby sanctions the making of the foregoing Rules in so far as they are made under section 80 of the Patents Act, 1964 (No. 12 of 1964).

GIVEN under the Official Seal of the Minister for Finance, this 23rd day of December, 1965.

SEÁN Ó LOINSIGH.

EXPLANATORY NOTE

These Rules are made under Section 96 of the Patents Act, 1964 . They come into operation on such date as may be appointed for the commencement of the Act.

The Rules relate to patents and certain other matters with which the Patents Office is concerned and replace the rules relating to patents made under the Industrial and Commercial Property (Protection) Act, 1927 .

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	Irish Statutory Instruments
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Irish Statutory Instruments

S.I. No. 268/1965 -- Patents Act, 1965.