The following is a summary of the amendments made to rules 3, 9, 10, new Part IIA, new 15A, 17, 20, 22, and new Fifth Schedule of the Patents (Patent Agents) Rules 2001 (“the Rules”):
(a) The fee paid under rule 17(2)(f)(ii) of the Rules is non-refundable if a complainant against a registered patent agent withdraws his complaint [Rules 3(4) and 17 of the Rules];
(b) Whilst a registered patent agent must have professional indemnity insurance before applying for a practising certificate, he has the option of having the professional indemnity insurance taken out by himself or someone else, for example, his firm [Rules 9(1), 9(4)(b)(vii), 9(4)(c)(i)(A), 9(4)(c)(i)(B), and 9(4)(c)(ii) of the Rules];
(c) A practising certificate issued under rule 9 of the Rules shall cease to be in force when the patent agent ceases to practise or to be employed, or becomes disqualified for a practising certificate or when the Registrar subsequently issues another practising certificate to the registered patent agent [Rule 10(1) of the Rules];
(d) A new Code of Conduct is introduced in new Fifth Schedule of the Rules;
(e) A complainant against a registered patent agent is allowed to withdraw his complaint before the conclusion of a Disciplinary Committee inquiry; and the Registrar may direct the Disciplinary Committee to continue the inquiry, notwithstanding such withdrawal [Rule 17(5) of the Rules];
(f) The Disciplinary Committee is required to serve to the Registrar, the affected person, and the complainant (if he is not the Registrar) a report of its decision, including a record of the proceedings before it, and the grounds of its decision [Rule 20(4) of the Rules]; and
(g) “Disciplinary Committee” replaces the word “Board” in rule 22(5) of the Rules.
The Patents (Patent Agents) (Amendment) Rules 2009 shall come into operation on the 15th December 2009.
The following is a summary of the amendments in Patents (Amendment) Rules 2009:
(a) The addition of the Hungarian Patent Office as an Examiner under Rule 2(3)
of the Patents Rules.
(b) Changes to Item 56(B) of the First Schedule:
(i) The introduction of a fee for a request for search and examination
after grant where the Examiner is the Hungarian Patent Office.
(ii) Revised fees for a request for search and examination after grant
where the Examiner is:
- the Australian Patent Office
- the Austrian Patent Office
- the Danish Patent and Trademark Office
The amendment relating to the revised fee where the Examiner is the Austrian Patent Office will come into force on 1 Jan 2010. The other amendments will come into force on 22 Oct 2009.