Patents Act 1977: Time periods defined in the Patents Rules 2007

1. This notice announces a legislative correction to the definition of time periods which are set out in the Patents Rules 2007 (SI 2007/3291, as amended). The correction is made by the Patents (Amendment) Rules 2011 (SI 2011/2052) which will come into force on 1 October 2011.

Background

2. The 2007 Rules prescribe many periods in connection with the processes for applying for and maintaining patent rights, and for resolving disputes over those rights.

3. The Rules were a wholesale modernisation and consolidation of previous legislation, which had been much amended. During the drafting of the Rules, certain time periods were reformulated using wording "X days/months/years beginning with" or "beginning on" a particular date or event. The new wording replaced periods which had been drafted using the formulation "X days/months/years from" a particular date or event (or a variety of wording with the same effect).

4. The intention was to bring consistency to the wording but not to change the method of calculation of the various prescribed periods. Guidance published at the time confirmed this intention, and the Office and its users accepted and maintained the view that this was what had been achieved.

The problem

5. There is established case-law that the "beginning with" formulation defines a period which starts and ends one day sooner than the "from" formulation.

6. The "beginning with" formulation (the so-called "inclusive rule") includes the defining date when computing the prescribed period. Generally speaking, a period of 1 month "beginning with 15 April" ends on 14 May.

7. In the "from” formulation (the so-called "exclusive rule"), the prescribed period does not start until the day after the defining date. Hence a period of 1 month "from 15 April" ends on 15 May.

The legislative correction

8. The purpose of the legislative correction is to alter the wording used to prescribe periods so that there is no doubt that they all clearly follow the exclusive rule. This restores their effect to that which existed prior to their modernisation, and accords with the practice and expectations of the Office and its users.

Office practice in relation to periods in the Patents Rules

9. Where the Office has made a procedural error, the Comptroller has the power under rule 107(3) to extend a time period, even if that period has expired. He can do so without a request having been made to him.

10. As explained above, the Office's understanding was that the periods in the Patents Rules 2007 were to be calculated using the exclusive rule. Where a patent applicant or other person has met the relevant requirement of a rule on the final day of a period calculated using the exclusive rule, the Office will have acted as if the requirement was met within the deadline, even if that period had in fact (under the inclusive rule) expired on the previous day.

11. In these circumstances, the Comptroller regards a procedural error as having occurred which falls within the ambit of rule 107(3). He therefore regards the period in question as having been extended by one day under rule 107(3), with the effect that the deadline is considered properly to have been met.

12. In light of the legislative correction, the Office will continue to use the exclusive rule when calculating the expiry of the relevant periods set out in the Rules.

Office practice in relation to periods in the Patents Act

13. Periods specified in the Patents Act 1977 (as amended) have not been altered.

14. In particular, the 20 year patent term set out in section 25(1) remains defined as "20 years beginning with the date of filing". Office practice has for many years been to regard that period as ending one day before the 20th anniversary of the filing date, and so this position is unchanged.

15. Also, the period set out in section 37(5) (in relation to obtaining certain remedies in entitlement proceedings) is defined as "two years beginning with the date of the grant". Following the recent decisions in Rigcool Ltd v Optima Solutions UK Ltd (BL O/149/11 and BL O/182/11), the Office regards this period as ending one day before the 2nd anniversary of grant of the patent in question (although in that case the Comptroller invoked rule 107(3) to extend the period by one day).

Office guidance and enquiries

16. An informal consolidated text of the 2007 Rules is available to the public for free and this will be updated to reflect the corrected legislation when it comes into force. The Manual of Patent Practice and other guidance will be amended and clarified when the next revision takes place.

17. Any enquiries about this notice should be made to:

James Porter +44(0)1633 814521
or Nick Smith +44(0)1633 814839

Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom

Sean Dennehey
Director of Patents
Intellectual Property Office

23 August 2011