Statutory guidance

Guidance and notes on the changes to patents form 9A, 10, 15, 21 and 34

Updated 6 March 2020

(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) Patents Form 9A, Patents Form 10, Patents Form 15 and Patents Form 21 have been revised and Patents Form 34 has been introduced as set out below.

1. Form 9A (Request for search)

(e) Patents Form 9A has been revised to reflect a change to the search fee which comes into force on 6 April 2018. A new section has been added to allow the applicant to declare the number of claims in their application. A related note (f) has been added to the notes on the form which sets out the threshold when claim fees become payable.

2. Form 10 (Request for substantive examination)

(f) Patents Form 10 has been revised to reflect a change to the fee for substantive examination which comes into force on 6 April 2018. A new section has been added to allow the applicant to declare the number of pages of description in their application. A related note (c) has been added to the notes on the form to inform on the threshold when pages fees become payable.

3. Form 21 (Application to register or give notice of rights acquired in a patent or in an application for a patent)

(g) Patents Form 21 has been amended to improve the clarity of the form. Tick boxes have been introduced into Part 5 in order to clarify the type of transaction, instrument or event which is being registered. Part 6 has been amended to make clear that either the name and address of the agent acting for the person making the transaction needs to be provided or an address for service should be provided to which all correspondence relating to the transaction should be sent. Part 7 has been amended to remove the previous tick boxes and replace them with a request for the agent or address for service which is to be used by the new owner.

(h) Minor amendments have also been made to correct a phone number, provide a link to a schedule template in the notes and to clarify that applicants may tick multiple tick boxes in part 9.

4. Form 15 (Notice of opposition)

(i) Reference to an explanatory leaflet has been removed as the leaflet is no longer in use by the office.

5. Form 34 (Grant fee for patent application)

(j) A new form has been introduced which will allow us to collect the grant fee (made up of any outstanding excess claims or pages fees), where required, before an application proceeds to grant. This reflects changes to the Patents fees which come into force on 6 April 2018.

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

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

Intellectual Property Office
Concept House
Patents Legal Section
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
Fax: +44(0)16 3381 7777