Statutory guidance

Amendments made 17 September 2009: patents forms 9A and 10 (revoked)

Updated 6 March 2020

1. Directions under section 123(2A) of the Patents Act 1977

1.1 Patents forms 9A and 10

1. The comptroller has made these directions under section 123(2A) of the Patents Act 1977.


2. These directions set out some changes to the forms whose use is required by rules.


3. These directions come into force on 4 October 2009.


4. The following patents forms as set out in the Schedule to these directions are the forms the use of which is required by the Patents Rules 2007 (SI 2007/3291):
   
   - Patents form 9A (Request for search)
   - Patents form 10 (Request for a substantive examination)


5. Patents forms 9A and 10, as so set out, replace the corresponding forms in the Schedule to the firections made on 5 December 2007 (which came into force on 17 December 2007). The directions made on 5 December 2007 are, to that extent, revoked.

Ian Fletcher
Comptroller-General of Patents, Designs and Trade Marks
17 September 2009

2. Guidance and notes on the directions given under section 123(2A)

2.1 Patents forms 9A and 10

(a) These notes are not part of the directions. They are intended to provide background and additional information.

(b) The Interpretation Act 1978 applies to these directions. Therefore, all the definitions set out in the Patents Act apply to these directions. Further, amongst other things, generally any words importing the masculine gender include the feminine and words in the singular include the plural and words in the plural include the singular.

(c) Section 123(2A) of the Patents Act allows the comptroller to give directions specifying any forms the use of which is required by the Patents Rules.

(d) In order to promote efficient, high quality patent processing internationally the Intellectual Property Office (IPO) is working with other IP offices to investigate how to share results of search and examination more systematically. Where a patent application has already been published the IPO may make search and/or examination results available to other patent offices. However, before a patent application has been published section 118 of the Patents Act 1977 prevents the IPO from making the results available to other offices without the consent of the patent applicant.

(e) In preparation for work sharing, patents forms 9A and 10 have been revised as set out below to obtain consent to share results.

2.2 Patents form 9A (Request for search)

(f) Part 7 has been renumbered as part 8.

(g) Part 8 has been renumbered as part 9.

(h) A new part 7 and guidance note (h) have been inserted. Part 7 seeks the applicants consent for the IPO to share the results of search with other patent offices, on a confidential basis, prior to publication of the application. New note (h) replaces old note (h) which has been re-referenced as note (i). New note (h) explains that the IPO will be co-operating with other patent offices to share the results of searches. It explains that consent is required from the applicant and that any shared work will not be made available through the other patent office prior to publication of the application in the UK.

(i) Note (f) has been amended to clarify that the application fee that must be paid is in addition to the search fee required to be filed with form 9A.

2.3 Patents form 10 (Request for a substantive examination)

(j) Part 4 has been renumbered as part 5 and the reference in part 5 to note (c) has been changed to refer to note (d).

(k) Part 5 has been renumbered as part 6.

(l) A new part 4 and guidance note (c) have been inserted. Part 4 seeks the applicants consent for the IPO to share the results of substantive exam performed before publication with other patent offices, on a confidential basis. This consent is required to share any such results prior to publication of the application. New note (c) replaces old note (c) which has been re-referenced as note (d). New note (c) explains that the IPO will be co-operating with other patent offices to share the results of examinations performed before publication. It explains that consent is required from the applicant and that any shared work will not be made available through the other patent office prior to publication of the application in the UK.

(m) All of the UK patents forms (and information about associated fees) are available on our website.

(n) Any queries about these directions should be addressed to:

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

Telephone: +44(0)30 0300 2000
Telephone: +44(0)16 3381 4000
Minicom: +44(0)30 0020 0015