Statutory guidance

Directions: filing patent applications by electronic means

Updated 27 September 2016

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 patent applications and certain other documents 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 17 December 2007.

4) The directions given on 16 March 2007 are revoked.

Interpretation

5) In these directions:

‘appropriate hardware’ means either:

(a) a smart card reader and a smart card supplied by the office
(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;

‘description of the invention’ means the description required under section 14(2)(b) of the Act

‘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 (iii) a 3.5” floppy disk;

‘electronic application’ means:

(a) an application for a patent under the Act
(b) in relation to an international application for a patent (UK), a request to enter the national phase

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;

‘priority application’ has the meaning given by rule 2(1) of the Rules;

‘smart-card application’ means an electronic application processed using the appropriate software and appropriate hardware;

‘the Rules’ means the Patents Rules 2007;

‘user’ means a person using the appropriate software and appropriate hardware, or the web interface, to deliver an electronic application;

‘web application’ means an electronic application delivered via the web interface;

‘web interface’ means the office’s dedicated web page for filing patent applications.

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.

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.

Delivery of smart–card applications

8) A smart-card application may be delivered either online or on digital media, except that no smart–card application may be submitted by a person who has not registered with the office.

9) A smart-card application may only be sent from a computer that uses a version of Microsoft Windows® supported by the office.

Online filing

10) An electronic application can be sent online at any time, except between 1am and 2.30am hours UK time.

11) A user may only deliver a web application if he also submits his email address.

12) A user may only deliver a smart–card application online if he has

(a) an account with the office;
(b) registered with the office; and
(c) registered for PKI certification.

13) A smart-card application delivered online shall be submitted using the appropriate software.

14) A smart-card application shall be sent online to the electronic address (URL address) provided to the user for that purpose by the office.

Filing a smart-card application using digital media

15) A smart-card application delivered on digital media must be accompanied by a paper document identifying:

(a) that the digital media contains an application for a patent
(b) the person applying for a patent or contain information sufficient to enable that person to be contacted by the office
(c) a list of the patents forms and documents making up the application (or which can be delivered at the same time as the application (as listed in paragraph 21, 22 or 23)) which are stored on the digital media

Formal requirements

16) Where an electronic application includes a description of the invention, rule 12(4) of the Rules shall apply to the extent that the description shall be preceded by the title of the invention.

17) The following provisions of the Rules shall apply to electronic applications 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 14-20A.

Illegible or incomplete documents and infected files

18) 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.

19) 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.

20) Where a document is treated as not complying with these directions under paragraph 18 or 19, provided the user can be identified, he shall be notified of this fact by the office.

Other documents

21) In relation to an application for a patent under the Act, the following documents may be delivered at the same time as the electronic application:

• patents form 3
• patents form 7
• patents form 9A
• patents form 10
• patents form 23
• a copy of a priority application where that application was filed with the United States Patent and Trademark Office
• translations of priority applications
• evidence to support a request for a late declaration of priority made on oatents form 3
• covering letter

and if it is a smart-card application the following document may also be delivered, using the appropriate software, at the same time as the application:

• patents form 8A

22) In relation to a request for an application for an international patent (UK) to enter the national phase, the following documents may be delivered at the same time as a smart–card application:

• patents form 3
• patents form 7
• patents form 9A
• patents form 10
• patents form 52
• translation of the international application
• translation of information relating to the deposit of a micro–organism
• translation of amendment under the Patent Cooperation Treaty
• translations of priority applications
• copy of the application under the Patent Cooperation Treaty
• copy of an amendment under the Patent Cooperation Treaty
• voluntary amendments
• evidence to support a request for a late declaration of priority made on patents form 3
• evidence to support a request for a further extension made on patents form 52
• covering letter

23) In relation to a request for an application for an international patent (UK) to enter the national phase, the following documents may be delivered via the web interface at the same time as a web application:

• patents form 3
• patents form 7
• patents form 9A
• patents form 10
• patents form 52
• translation of the international application
• translation of information relating to the deposit of a micro-organism
• translation of amendment under the Patent Cooperation Treaty
• translations of priority applications
• copy of the application under the Patent Cooperation Treaty
• copy of an amendment under the Patent Cooperation Treaty
• voluntary amendments
• evidence to support a request for a late declaration of priority made on patents form 3
• evidence to support a request for a further extension made on patents form 52
• covering letter

Delivery of documents in their original format

24) The user may deliver documents related to a smart–card application in their original format. These documents shall be submitted using the appropriate software at the same time as the smart-card application.

(25) The documents mentioned in paragraph 24 shall not be part of the application. They shall only be used in the subsequent processing of the smart–card application for verification of its contents at the time it was delivered.

Signatures

26) 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.

27) In paragraph 26:

‘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.

Acknowledgment and time of delivery

28) Where an electronic application has been delivered online an acknowledgement (‘the receipt’) will be issued to the user electronically.

29) Where no receipt is issued in accordance with paragraph 28, the electronic application will be treated as not complying with these directions.

30) The receipt will specify:

(a) the date and time of delivery at the office
(b) the application number allocated to the electronic application
(c) a list of the patents forms and documents delivered at the same time as the electronic application

31) The receipt for an electronic application delivered on digital media will include the information referred to in paragraph 30, but will be sent to the user by post.

Payment of fees

32) 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.

33) Where such a form is filed with a web application, the fee shall be paid via the web interface at the time of making the application.

34) Fees payable with a web application may be paid using a deposit account held with the office or by credit–card or debit–card.

Fees may be paid on a smart–card application from a deposit account held with the office or by a credit–card or debit–card registered with the office for that purpose.

Ian Fletcher
Comptroller–General of Patents, Designs and Trade Marks

December 2007