Statutory guidance

Directions under section 124A of the Patents Act 1977

Published 17 June 2014

© Crown copyright 2014

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Introduction

  1. The comptroller has given the following directions under section 124A of the Patents Act 1977 ('the Act') to direct the form and manner in which patents which are in force in the UK may be renewed in electronic form by using electronic communications.

  2. If an electronic request to renew a patent is delivered to the office in a form or a manner which does not comply with these directions, the office may treat the request as not having been delivered, and the renewal fee as not having been paid. The patent in question will cease to have effect under section 25(3) of the Act subject to the period set out under section 25(4) of the Act.

  3. These directions come into force on 21 June 2014.

  4. The directions given on 12 March 2014 are revoked.

Interpretation

  1. In these directions:

    'the Act' means the Patents Act 1977;

    'additional late renewal fee' means any additional fee for late renewal prescribed under rule 5 of the Fees Rules and listed at Schedule 2 Part 2 to those Rules;

    'the Fees Rules' mean the Patents (Fees) Rules 2007;

    'the office' means the Patent Office or, where appropriate, the comptroller;

    'online', in relation to a document or message being delivered, refers to a document or message that has been transmitted from one device to another by means of an electronic communications network (within the meaning of section 32 of the Communications Act 2003);

    'patent' means a patent which is granted and in force in the UK, that is to say, a UK patent or a European Patent (UK);

    'register' means the Register of Patents kept under section 32 of the Act;

    'renewal fee' means the fee referred to under section 25(3) and rule 36 of the Rules and prescribed under rule 4 of the Fees Rules and listed at Schedule 2 Part 1 to those Rules;

    'renewal period' refers to the periods specified by rules 37(1) and (2) and 38 of the Rules;

    'request' means a request to renew a patent;

    'requester' means a person making the request;

    'the Rules' mean the Patents Rules 2007;

    'web interface' means the office’s dedicated web page for filing electronic patent renewal requests.

Patent renewal requests

  1. Patent renewals may be requested via the web interface at any time. Online or electronic requests to renew a patent not sent via the web interface may be treated as not having been delivered.

  2. Renewal payments cannot be made using the web interface where an application to cancel a licence of right entry under section 47 of the Act is pending or where a licence of right has been cancelled but the balance of renewal payments as required by section 47(2) of the Act is still outstanding.

Illegible or incomplete requests or incorrect or incomplete patent numbers

  1. A request to renew a patent must be accompanied by an e-mail address to which an email acknowledging receipt of the renewal request(s), receipt of payment and the certificate of payment can be sent. Requests containing an incorrect e-mail address may be treated as not having been delivered to the office.

Payment of fees

  1. Renewal fees and, where due, additional late renewal fees must be paid via the web interface at the time the request is made. Failure to pay all of the fees due may result in the request being treated as not having been received.

  2. Renewal fees payable with the request must be paid in Sterling using a deposit account held with the office or by a valid credit card or debit card.

  3. Where an online payment is subsequently rejected, the request will be treated as not having been received.

Acknowledgment and time of delivery

  1. Where a request has been received an online acknowledgement ('the receipt') will be sent by the office to the requester’s email address specifying the time and date of the request and the patent(s) for which renewal was requested. The requester should not assume the office has definitely received the request until the receipt has been received.

  2. A subsequent email will be sent to the e-mail address given by the requester when the renewal payment is accepted. This will specify the date the renewal request was received, the patent(s) for which renewal was requested, the total fees paid and the date on which the payment was processed.

  3. Once the full renewal payment has been accepted, the office will issue a certificate of payment to the email address supplied by the requester.

  4. A patent renewal will not be treated as having been completed until the office has both issued an e-mail containing this certificate of payment to the requester and entered details of the renewal on the register.

Specifying the address to which the next renewal notice is to be sent

  1. A request under rule 39(3)(a) that the next renewal notice is to be sent to an address other than the address for service entered in the register cannot be filed using the web interface. Any online communication to that effect shall be treated as not having been delivered irrespective of whether a request to renew the patent has been accepted or entered onto the register.

John Alty
Comptroller-General of Patents Designs and Trade Marks
June 2014

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