Statutory guidance

Directions: electronic filing of pending patent application documents

Published 10 March 2008

1. 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 documents relating to pending patent applications may be delivered to him in electronic form or using electronic communications.
   
   
2. These directions and any others made under s.124A set out the extent to which such documents may be delivered to the comptroller in electronic form or using electronic communications.
   
   
3. These directions come into force on 31 March 2008.

2. Interpretation

4. In these directions:
   
   'amended pages' means amended pages of the specification, filed under s.18(3) or 19(1) of the Act;
   
   'appropriate hardware' means either:
   
    (a) a smart card reader and a smart card supplied by the office; or
   
    (b) a smart card reader and smart card supplied by any other person and which are acceptable to the office;
   
   'appropriate software' means version 3.20 or above of the UK EPO online services software;
   
   'digital media' means:
   
    (i) a compact optical disk containing electronic data conforming to ISO 9660;
   
    (ii) a digital versatile disk (DVD) containing electronic data conforming to ISO 9660 or ISO 13346; or
   
    (iii) a 3.5" floppy disk;
   
   'electronic document' means a document listed in paragraph 8 processed using the appropriate software and appropriate hardware or delivered via the web interface;
   
   'the office' means the Patent Office or, where appropriate, the comptroller;
   
   'online', in relation to a document being delivered, refers to a document 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);
   
   'original format', in relation to a document, means a document in the file format in which it was originally created before it was converted into a PDF file;
   
   'pending patent application' means a UK patent application that has been allocated a GB application number;
   
   'priority application' has the meaning given by rule 2(1) of the Rules; 'replacement pages' means replacement pages of the specification, filed under section 15A(6)(b) of the Act in response to a preliminary examination report;
   
   'the Rules' means the Patents Rules 2007;
   
   'sequence listing' has the same meaning as it has under the Patent Co-operation Treaty;
   
   'smart–card document' means an electronic document listed in paragraph 8, processed using the appropriate software and appropriate hardware;
   
   'user' means a person using the appropriate software and appropriate hardware, or the web interface, to deliver an electronic document;
   
   'web document' means an electronic document delivered via the web interface;
   
   'web interface' means the office’s dedicated web page for filing documents relating to pending patent applications.
   
   
5. Subject to paragraph 6, in these directions, 'patents form' shall be construed as a reference to a document containing the information required by the relevant patents form as set out in directions under section 123(2A) of the Act.
   
   
6. In these directions, 'patents form AF1' shall be construed as a reference to a document containing the information that must be provided when paying the application fee for a pending patent application.
   
   
7. In these directions, 'delivered' and related expressions, means delivered to the office and for the purposes of the Act and the Rules a document shall be treated as filed at the time it was delivered.

3. Electronic documents

8. In relation to a pending patent application under the Act, the following documents may be delivered online using the appropriate software or via the web interface:

• patents form AF1
• patents form 7
• patents form 9A
• patents form 10
• patents form 52
• evidence accompanying patents form 52 to support a request for a further extension of time
• amended pages
• replacement pages
• abstract
• claims
• translations of priority applications
• search reports from other offices
• sequence listing
• covering letter

4. Delivery of smart–card documents

9. A smart–card document may be delivered either online or on digital media, except that no smart–card document may be submitted by a person who has not registered with the office.
   
   
10. A smart–card document may only be sent from a computer that uses a version of Microsoft Windows® supported by the office.

5. Online filing

11. An electronic document can be sent online at any time, except between 1am and 2.30am hours UK time.
    
    
12. A user may only deliver a web document if he also submits his email address.
    
    
13. A user may only deliver a smart–card document online if he has:
    
    (a) an account with the office;
    
    (b) registered with the office; and
    
    (c) registered for PKI certification.
    
    
14. A smart–card document delivered online shall be submitted using the appropriate software.
    
    
15. A smart–card document shall be sent online to the electronic address (URL address) provided to the user for that purpose by the office.

6. Filing a smart-card document using digital media

16. A smart-card document delivered on digital media must be accompanied by a paper document identifying:
    
     (a) the application number of the patent application to which the documents stored on the digital media relate;
    
     (b) contact details of a contact point for the applicant;
    
     (c) a list of the patents forms and documents which are stored on the digital media.

7. Formal requirements

17. Where an electronic document is the description of the invention or any part thereof, rule 12(4) of the Rules shall apply to the extent that the description shall be preceded by the title of the invention.
    
    
18. Where an electronic document is the abstract, description, claims, drawings or any part thereof, the following provisions of the Rules shall apply and shall be formal requirements: Schedule 2 Part 1 paragraph 3, Schedule 2 Part 2 paragraphs 4-7, 9 and 10 and Schedule 2 Part 3 paragraphs 11, 12 and 14-20.

8. Illegible or incomplete documents and infected files

19. Where part or all of a document delivered under these directions is illegible or incomplete, the whole document shall be treated as not complying with these directions.
    
    
20. Where a document delivered under these directions is reported as having a virus (or other malicious software) by the office’s virus checking software, the document shall be treated as not complying with these directions.
    
    
21. Where a document is treated as not complying with these directions under paragraph 19 or 20, provided the user can be identified, he shall be notified of this fact by the office.

9. Delivery of documents in their original format

22. The user may deliver documents related to a smart–card document in their original format. These documents shall be submitted using the appropriate software at the same time as the smart–card document.
    
    
23. The documents mentioned in paragraph 22 shall only be used for verification of the contents of the smart–card document at the time it was delivered.

10. Signatures

24. Where a document requiring a signature is delivered online or on digital media, it shall only be treated as signed where the signature takes the form of a facsimile signature, a text string signature or an enhanced electronic signature.
    
    
25. In paragraph 24:
    
    'facsimile signature' means a TIFF or JPEG image of the signatory’s signature;
    
    'text string signature' means a string of characters, preceded and followed by a forward slash (/), selected by the signatory to provide evidence of his identity and of his intent to sign the document in question;
    
    'enhanced electronic signature' means a signature created using an electronic PKI–based certificate recognised by the office.

11. Acknowledgment and time of delivery

26. Where an electronic document has been delivered online an acknowledgement ('the receipt') will be issued to the user electronically.
    
    
27. Where no receipt is issued in accordance with paragraph 26, the electronic document will be treated as not complying with these directions.
    
    
28. The receipt will specify:
    
     (a) the date and time of delivery at the office;
    
     (b) a list of the electronic documents that were delivered at the same time for the pending patent application.
    
    
29. The receipt for an electronic document delivered on digital media will include the information referred to in paragraph 28, but will be sent to the user by post.

12. Payment of fees

30. Where a patents form or other document is required by the Patents (Fees) Rules 2007 to be accompanied by a fee, that patents form or document shall be treated as not complying with these directions until the fee has been paid.
    
    
31. Where such a form or document is filed as a web document, the fee shall be paid via the web interface at the time of filing the form or document.
    
    
32. Fees payable with a web document may be paid using a deposit account held with the office or by credit–card or debit–card.
    
    
33. Fees payable with a smart–card document may be paid using a deposit account held with the office or by a credit–card or debit–card registered with the office for that purpose.

Sean Dennehey
Assistant Comptroller & Director of Patents
acting for the Comptroller-General of Patents, Designs and Trade Marks
10 March 2008