INDUSTRIAL PROPERTY: SUBSIDIARY LEGISLATION
(previously "UNITED KINGDOM TRADE MARKS")

INDEX TO SUBSIDIARY LEGISLATION

Industrial Property Regulations

INDUSTRIAL PROPERTY REGULATIONS

 

(section 137)

 

(31st August, 2012)

 

ARRANGEMENT OF REGULATIONS

 

   REGULATION

 

 

 

PART I
Preliminary

 

   1.   Citation

 

   2.   Interpretation

 

 

 

PART II
Applications and Procedure for Grant of Patents

 

   3.   Application for patent

 

   4.   Marking of application for patent

 

   5.   Description

 

   6.   Claims

 

   7.   Drawings

 

   8.   Abstract

 

   9.   Measures, terminology and signs

 

   10.   Number of copies and physical requirements

 

   11.   Declaration of priority and translation of earlier application

 

   12.   Time for furnishing information on foreign applications

 

   13.   Withdrawal and amendment of application

 

   14.   According and notifying filing date

 

   15.   Publication of the patent application

 

   16.   Grant of patent, publication of reference and issuance of certificate

 

   17.   Annual fees and lapse of patent

 

   18.   Exploitation of patented invention

 

   19.   Compulsory licences

 

   20.   Invalidation of patent

 

 

 

PART III
Utility Model Certificates

 

   21.   Application for utility model certificate

 

   22.   Marking of application for utility model certificate

 

 

 

PART IV
Industrial Designs

 

   23.   Application for registration of industrial design

 

   24.   Number and size of representations and specimen

 

   25.   Marking of application for registration of industrial design

 

   26.   Registration of industrial design

 

   27.   Refusal for registration of industrial design

 

   28.   Renewal of registration of industrial design

 

   29.   Inspection of registered design

 

 

 

PART V
Layout Designs of Integrated Circuits

 

   30.   Application for registration of layout design

 

   31.   Marking of application for registration of layout design

 

   32.   Size of drawings and representations

 

   33.   Registration of layout design and issuance of certificate

 

 

 

PART VI
Marks

 

   34.   Application for registration of mark

 

   35.   Marking of application for registration of mark

 

   36.   Reproduction of mark

 

   37.   Transliteration and translation of mark

 

   38.   Declaration of priority and translation of earlier application

 

   39.   Withdrawal of application

 

   40.   Acceptance of application, etc.

 

   41.   Opposition for registration of mark

 

   42.   Registration of mark, publication of reference, issuance of certificate

 

   43.   Renewal of registration of mark

 

   44.   Invalidation of registration of mark

 

   45.   Removal on the ground of non-use

 

   46.   Reinstatement of lapsed mark rights

 

   47.   Collective marks

 

 

 

PART VII
International Registration under the Madrid Protocol

 

   48.   Initial examination of international applications

 

   49.   Collective and certification marks

 

   50.   Replacement of internationally registered mark

 

   51.   Transformation

 

   52.   Opposition of registration of internationally registered mark

 

 

 

PART VIII
Geographical Indications

 

   53.   Application for registration of geographical indication

 

   54.   Marking of application for registration of geographical indication

 

   55.   Acceptance of application, etc.

 

   56.   Opposition for registration of geographical indication

 

   57.   Registration of geographical indication and issuance of certificate

 

   58.   Invalidation of registered geographical indication

 

 

 

PART IX
Traditional Knowledge and Handicrafts

 

   59.   Registration of traditional knowledge

 

   60.   Registration of handicrafts

 

   61.   Marking of application for traditional knowledge and handicrafts

 

 

 

PART X
General

 

   62.   Changes in ownership, etc.

 

   63.   Excluded days

 

   64.   Inspection of registers, etc.

 

   65.   Extension of time for applications

 

   66.   Corrections of errors

 

 

 

      Schedule 1 - Forms

 

      Schedule 2 - Fees

S.I. 78, 1997
S.I. 70, 2012.

PART I
Preliminary (regs 1-2)

 

1.   Citation

   These Regulations may be cited as the Industrial Property Regulations.

 

2.   Interpretation

   (1) In these Regulations, unless the context otherwise requires-

   "abstract" means a concise summary of the technical disclosure of a patent document enabling a reader to quickly ascertain the subject matter covered;

   "claim" means a part of a patent document which defines the matter for which protection is sought;

   "description" means the technical field to which an invention relates, and includes a brief summary of the technical background of the invention and shall indicate at least one mode known in which the invention can be performed; and

   "drawings" means the aid necessary for the understanding of an invention.

PART II
Applications and Procedure for Grant of Patents (regs 3-20)

 

3.   Application for patent

   Subject to section 12 of the Act, an application for a patent shall-

 

   (a)   be made in Form 1 set out in Schedule 1; and

 

   (b)   be accompanied by-

 

      (i)   a fee set out in Schedule 2,

 

      (ii)   a statement, where the applicant is the inventor, and

 

      (iii)   a statement justifying the applicant's right to the patent, where the applicant is not the inventor.

 

4.   Marking of application for patent

   (1) Upon receipt of an application under regulation 3, the Registrar shall mark, on each document making up the application, the actual date of receipt and the application number consisting of the letters "BW", slant, the letter "A", slant, the four-digit numbers of the year in which the initial papers were received, slant, and a five-digit number allocated in the sequential order in which applications are received.

   (2) Where any corrections or other documents are later filed on different dates, the Registrar shall mark the actual dates of receipt for any documents which are later filed with him or her or for which any corrections were made in the appropriate place of the application for the grant of the patent.

   (3) The application number allocated under subregulation (1) shall be quoted in all subsequent communications concerning the application.

 

5.   Description

   (1) A description shall first state the title of the invention as it appears in the application for a patent and shall-

 

   (a)   specify the technical field to which the invention relates;

 

   (b)   indicate the background art which, as far as known to the applicant, can be regarded as useful for the understanding, searching and examination of the invention, and, where necessary, cite the documents reflecting such art;

 

   (c)   disclose the invention in such terms that it can be understood and state its advantageous effects, if any, with reference to the background art;

 

   (d)   briefly describe the figures in the drawings, if any;

 

   (e)   set out, in terms of examples and with reference to drawings, where appropriate, at least one mode contemplated by the applicant for carrying out the invention; and

 

   (f)   indicate explicitly, when it is not obvious from the description or nature of the invention, the way in which the invention is industrially applicable and the way in which it can be made or used.

   (2) The manner and order specified in subregulation (1) shall be followed except where, because of the nature of the invention, a different manner or a different order would result in a better understanding and a more concise presentation.

 

6.   Claims

   (1) Where there are several claims forming part of an application for a patent, they shall be numbered consecutively in Arabic numerals.

   (2) One or more claims forming part of an application for a patent, shall be fully supported by the description and the drawings.

   (3) Whenever appropriate, a claim shall contain-

 

   (a)   a statement indicating those technical features of the invention which are necessary for the definition of the invention but which, in combination, are part of the prior art; and

 

   (b)   a characterising portion, preceded by the words "characterised in that", "characterised by", "wherein the improvement comprises" or any other words to the same effect stating concisely the description which, in combination with the features stated under (a), it is desired to protect.

   (4) Where the application for a patent contains drawings, the technical features mentioned in the claims shall, where necessary, be followed by the reference signs relating to such features; and where reference signs are used they shall be placed between parentheses.

   (5) Where the inclusion of reference signs under subregulation (4) does not facilitate quicker understanding of a claim, such signs shall not be made.

   (6) A claim submitted after the filing date of an application for a patent and which is not identified with the other claims previously filed in the application shall, at the choice of the applicant, be submitted either as an amended claim or as a new claim.

   (7) A claim submitted after the filing date of an application for a patent shall not contain anything new or that was not disclosed before.

 

7.   Drawings

   (1) Drawings forming part of an application for a patent shall-

 

   (a)   be on sheets the usable surface area of which shall not exceed 26.2 cm by 17 cm;

 

   (b)   be on sheets which do not contain frames around the usable or used surface; and

 

   (c)   have minimum margins as follows-

 

      (i)   top 2.5 cm,

 

      (ii)   left side 2.5 cm,

 

      (iii)   right side 1.5 cm, and

 

      (iv)   bottom 1.0 cm.

   (2) Without derogating from subregulation (1), drawings forming part of an application for a patent shall be executed as follows-

 

   (a)   without colouring in durable, black sufficiently dense and dark, uniformly thick and well-defined lines and strokes to permit satisfactory reproduction;

 

   (b)   cross-sections shall be indicated by hatching which does not impede the clear reading of the reference signs and leading lines;

 

   (c)   the scale of the drawings and the distinctness of their graphical execution shall be such that a photographic reproduction with a linear reduction in size to two-third of the size would enable all details to be distinguished without difficulty, and where, as an exception, the scale is given on a drawing it shall be represented graphically;

 

   (d)   all numbers, letters and reference signs appearing in the drawings shall be simple and clear, and brackets, circles and inverted commas shall not be used in association with numbers and letters;

 

   (e)   elements of the same figure shall be in proportion to each other, unless a difference in proportion is indispensable for the clarity of the figure;

 

   (f)   the height of the numbers and letters shall not be less than 0.32 cm and for the lettering of drawings, the Latin and, where customary, the Greek alphabets shall be used;

 

   (g)   the same sheet of drawings may contain several figures and where figures drawn on two or more sheets are intended to form one whole figure-

 

      (i)   the figures on the several sheets shall be arranged so that the whole figure can be assembled without concealing any part of the partial figures,

 

      (ii)   the different figures shall be arranged without wasting space, clearly separated from one another, and

 

      (iii)   the different figures shall be numbered consecutively in Arabic numerals, independently of the numbering of the sheets;

 

   (h)   reference signs not mentioned in the description or claims shall not appear in the drawings, and vice versa and the same features, when denoted by reference signs, shall, throughout the application, be denoted by the same signs;

 

   (i)   the drawings shall not contain textual matter, except, when required for the understanding of the drawings, a single word or words such as "water", "steam", "open", "closed", "section on AA" and, in the case of electric circuits and block schematic or flow sheet diagrams, a few short catchwords; and

 

   (j)   the sheets of the drawings shall be numbered in accordance with regulation 10 (9).

   (3) Flow sheets and diagrams shall, for purposes of these Regulations, be considered to be drawings.

 

8.   Abstract

   (1) An abstract forming part of an application for a patent shall be so drafted that it can efficiently serve as a scanning tool for purposes of searching in the particular art.

   (2) An abstract shall-

 

   (a)   have a summary of the disclosure as contained in the description, the claim and any drawings indicating the technical field to which the invention pertains;

 

   (b)   be drafted in a way that merely serves as a source of technical information; and

 

   (c)   where applicable, contain the chemical formula which, among all the formulae contained in the application, best characterises the invention.

   (3) An abstract shall be as concise as the disclosure permits, containing not less than 50 but not more than 150 words.

   (4) An abstract shall not contain statements on the presumed merits or value of the invention or on its speculative application.

   (5) Each main technical feature mentioned in the abstract and illustrated by a drawing in the application shall be followed by a reference sign, placed between parentheses.

 

9.   Measures, terminology and signs

   (1) In an application for a patent, the following shall be used-

 

   (a)   units of weights and measures in terms of the metric system;

 

   (b)   temperatures in degrees celsius; and

 

   (c)   density in metric units.

   (2) For indications of heat, energy, light, sound, and magnetism, as well as for mathematical formulae and electrical units, rules in general use shall be observed; and for chemical formulae, the symbols, atomic weights, and molecular formulae, in general use, shall be observed.

   (3) In general, only such technical terms, signs and symbols as are generally accepted in the art shall be used.

   (4) The terminology and the signs shall be consistent throughout the application.

 

10.   Number of copies and physical requirements

   (1) Three copies, or such number as the Registrar may require, of the application for a patent and any accompanying statements or documents, shall be filed.

   (2) All elements of an application for a patent shall be so presented so as to enable direct reproduction by photography, electrostatic processes, photo offset and microfilming.

   (3) Only one side of each sheet contained in an application shall be used.

   (4) All elements of an application for a patent shall be on paper which is flexible, strong, white, smooth, non-shiny and durable.

   (5) The size of the sheets shall be A4 (29.7 cm x 21 cm), or such other size as the Registrar may determine.

   (6) The minimum margins of sheets shall be as follows-

 

   (a)   upper margin of each page, except the first page: 20 mm;

 

   (b)   upper margin of the first page: 30 mm;

 

   (c)   side margin adjacent to the binding: 25 mm;

 

   (d)   other side margin: 20 mm; and

 

   (e)   bottom margin: 20 mm.

   (7) All sheets shall be numbered at the top of the sheet, in the middle, in consecutive Arabic numerals.

   (8) In effecting the sequential numbering of the sheets, the elements of an application for a patent shall be placed in the following order-

 

   (a)   a request;

 

   (b)   a description;

 

   (c)   one or more claims;

 

   (d)   drawings; and

 

   (e)   an abstract.

   (9) The sequential numbering of the sheets shall be effected by using the following three separate series of numbering-

 

   (a)   the first series applying to the application only and commencing with the first sheet of the application;

 

   (b)   the second series commencing with the first sheet of the description and continuing through the claims until the last sheet of the abstract; and

 

   (c)   the third series being applicable to the sheets of the drawings only and commencing with the first sheet of the drawings.

   (10) The text matter of the application shall be typed in black, except for the graphic symbols, chemical or mathematical formulae and certain characters which may be handwritten or drawn.

 

11.   Declaration of priority and translation of earlier application

   (1) Where priority is claimed in an application for a patent, a declaration in terms of section 17 (1) of the Act, shall provide-

 

   (a)   a certified copy of the application earlier filed;

 

   (b)   the date of filing of the earlier application;

 

   (c)   the symbol of the International Patent Classification which has been allocated to the earlier application, subject to subregulation (3);

 

   (d)   the country in which the earlier application was filed or, where the earlier application is a regional or an international application, the country or countries for which it was filed; and

 

   (e)   where the earlier application is a regional or an international application, the office with which it was filed.

   (2) Where at the time of filing the declaration referred to in subregulation (1), a copy of the application earlier filed is not found, that copy shall be furnished within three months from the date on which the application containing the declaration was filed:

   Provided that the Registrar may extend the time limit referred to in this subregulation for an additional period of three months, if the applicant supplies evidence that, due to circumstances beyond the applicant control, the applicant was not able to comply with the prescribed time limit.

   (3) Where a symbol of the International Patent Classification has not been allocated to the earlier application, or had not yet been allocated at the time of filing the declaration referred to in subregulation (1), the applicant shall state this fact in the said declaration and shall communicate such symbol as soon as it has been allocated.

   (4) The period for furnishing the certified copy of the earlier application under section 17 (2) of the Act, shall be three months from the date of filing the application, and where a copy has already been furnished for another application, the applicant may respond by making a reference to that other application.

   (5) Where the earlier application is in a language other than English, the applicant shall, within two months from the date of the aforementioned request, furnish an English translation of the earlier application.

 

12.   Time for furnishing information on foreign applications

   (1) The time limits to be specified for furnishing the information requested by the Registrar under section 19 (2) of the Act, shall not be less than two but not more than six months from the date a request is made.

   (2) Where the applicant is unable to submit the information requested under section 19 of the Act, the Registrar may suspend the procedure for the examination of the application until such time as the documents are furnished.

 

13.   Withdrawal and amendment of application

   (1) An application for a patent shall be withdrawn by written declaration submitted to the Registrar and signed by each applicant or an agent.

   (2) The application and publication fee shall not be refunded if the application is withdrawn.

   (3) Any amendment in terms of section 13 (2) of the Act shall be subjected to the payment of the fee set out in Schedule 2.

 

14.   According and notifying filing date

   (1) The Registrar shall request the applicant to supply any missing information under section 20 (3) of the Act, within two months from the date of the request, together with the payment of the fee set out in Schedule 2.

   (2) Where in terms of section 20 (5) of the Act, a request is made to an applicant to furnish any missing part or drawings to the Registrar, such information shall be furnished within two months.

   (3) Where in terms of section 23 (2) of the Act, there is any requirement or observation that is missing from a patent application, the Registrar shall notify the applicant in writing, inviting him or her to comply with the missing requirement or to submit any observation within three months from the date of notification by the Registrar.

 

15.   Publication of the patent application

   (1) Subject to section 21 of the Act, an application for a patent shall be published in the Journal in Form 2 set out in Schedule 1 upon the request of the applicant.

   (2) The applicant shall pay the fee set out in Schedule 2 to the Registrar for publication of his or her application in the Journal.

 

16.   Grant of patent, publication of reference and issuance of certificate

   (1) Where the Registrar grants a patent in terms of section 23 (3) of the Act, he or she shall issue a certificate of the patent in Form 3 set out in Schedule 1 and a copy of the patent in Form 4 set out in Schedule 1.

   (2) The Registrar shall allot to each patent granted, a publication number of the patent in the sequential order of grant.

   (3) The Registrar shall, upon payment of the fee set out in Schedule 2, make a copy of the patent to any person who requests such copy in terms of section 23 (4) of the Act.

   (4) The publication of the reference to the grant of the patent in terms of section 23 (3) (c) of the Act, shall include-

 

   (a)   the number of the patent;

 

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

 

   (c)   the name and address of the inventor, except where he or she has asked not to be named in the patent;

 

   (d)   the name and address of the agent, if any;

 

   (e)   the filing date;

 

   (f)   if priority has been claimed and the claim has been accepted, a reference to the declaration of priority, the priority date and the name of the country or countries in which or for which the earlier application was filed;

 

   (g)   the effective date of grant of the patent;

 

   (h)   the title of the invention;

 

   (i)   the abstract;

 

   (j)   the most illustrative of the drawings, if any; and

 

   (k)   the symbol of the International Patent Classification.

 

17.   Annual fees and lapse of patent

   (1) Subject to section 28 (2) of the Act, a patentee shall pay the fee set out in Schedule 2, which shall be the annual maintenance fees.

   (2) The Registrar shall record and publish a notification of the lapse of a patent.

   (3) A patentee who is late in paying the annual maintenance fees shall pay a surcharge fee set out in Schedule 2 on condition that he or she shall pay the full annual maintenance fees within six months from the date of payment of the surcharge.

 

18.   Exploitation of patented invention

   (1) The Registrar shall record and publish, by notice in the Gazette, the decision of the Minister to authorise a government agency, other person or body to exploit a patented invention in the public interest.

   (2) If the decision of the Minister is the subject of an appeal, the Registrar of the High Court shall notify the Registrar of the court's decision once it becomes final, and the Registrar shall record the decision and publish it by notice in the Gazette.

 

19.   Compulsory licences

   (1) A request for a compulsory licence under section 33 (4) of the Act, shall be made in Form 5 set out in Schedule 1 and accompanied by the fee set out in Schedule 2.

   (2) The Master of the High Court shall notify the Registrar of the court's decision regarding any application for the grant of a compulsory licence, as provided for under section 33 (3) of the Act, once the decision becomes final, and the Registrar shall record the decision in the journal and cause it to be published in the Gazette.

 

20.   Invalidation of patent

   (1) Where the provisions of section 36 (1) of the Act apply only to some of the claims or some parts of the claims, such claim or parts of a claim shall be invalidated.

   (2) The patent owner shall, in writing, notify any licensee of any court proceedings instituted for the invalidation of the patent.

   (3) The person requesting invalidation shall notify any beneficiaries of compulsory licences granted under sections 31 to 34 of the Act.

   (4) Where the ground of invalidity invoked under subregulation (3) is that the patent owner is not the inventor or his or her successor in title, the person alleged to have the right to the patent shall also be informed.

PART III
Utility Model Certificates (regs 21-22)

 

21.   Application for utility model certificate

   (1) Any applicant who wishes to convert a patent application into an application for utility model certificate in terms of section 18 of the Act shall pay the fee set out in Schedule 2.

   (2) The Registrar shall, within two months of the receipt of the request to convert, notify the applicant of his or her decision, in writing, and, where the Registrar refuses the request, he or she shall state the reasons for such refusal.

   (3) Where the Registrar grants a utility model certificate in terms of section 42 of the Act, he or she shall issue a copy of a utility model certificate in Form 6 set out in Schedule 1.

 

22.   Marking of application for utility model certificate

   (1) Upon receipt of an application made under regulation 21, the Registrar shall mark, on each document making up the application, the actual date of receipt and the application number consisting of the letters "BW", slant, the letter "U", slant, the four-digit numbers of the year in which the initial papers were received, slant, and a five-digit number allocated in the sequential order in which applications are received.

   (2) Where any corrections or other documents are later filed on different dates, the Registrar shall mark the actual dates of receipt for any documents which are later filed with him or her or for which any corrections were made in the appropriate place of the application for utility model certificate.

   (3) The application number allocated under subregulation (1) shall be quoted in all subsequent communications concerning the application.

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