Statutory guidance

Directions on observations concerning the patentability of an invention

Updated 16 July 2015

© Crown copyright 2015

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This publication is available at https://www.gov.uk/government/publications/submitting-observations-concerning-the-patentability-of-an-invention/directions-on-observations-concerning-the-patentability-of-an-invention

1. Submitting observations concerning the patentability of an invention

  1. The comptroller has made the following directions under section 124A of the Patents Act 1977 ("the Act") to direct the form and manner in which observations made by a third party, under section 21 of the Act, on the question of whether the invention is a patentable invention may be made in electronic form or using electronic communications.

  2. These directions come into force on 25 May 2005.

2. Interpretation

  1. In these directions 'digital media' means-

    a compact read–only optical disk that can contain electronic data and conforms to ISO 9660: 1988 or

    a 3.5" floppy disk that can contain electronic data and

    'observations'means observations made under section 21 of the Act

3. Delivery of observations

  1. Observations may be sent by email or delivered on digital media.

  2. Observations sent by email shall be sent to one of the following email addresses section21@patent.gov.uk or section21@ipo.gov.uk

  3. No document, other than an email containing observations, shall be sent to those email addresses.

4. Content and format of observations

  1. Where observations are sent by email, the email shall contain-

    the observations; and

    sufficient information to enable the comptroller to identify the patent application to which the observations relate

  2. Observations delivered on digital media shall be accompanied by a paper document containing-

    a statement that the digital media carries observations

    sufficient information to enable the comptroller to identify the patent application to which the observations relate

  3. No observations sent by email or delivered on digital media shall be encrypted.

5. Illegible or incomplete observations and infected observations

  1. Where part or all of the observations delivered under these directions are illegible or incomplete, the whole of the observations shall be treated as not complying with these directions.
  2. Where the observations delivered under these directions-

    are reported as having a virus (or other malicious software) by the Patent Office’s virus checking software; or

    appear to contain a computer program (other than a document), they shall be treated as not complying with these directions

  3. Where the observations are treated as not complying with these directions under paragraph 10 or 11, provided that the person making the observations can be identified, he shall be notified of this fact by the comptroller.

6. Acknowledgement

  1. Where the observations have been sent in accordance with these directions, they shall be treated as delivered only after they have been acknowledged by the comptroller.

  2. The time of delivery accorded to an email containing observations shall be that generated by the Patent Office’s internal electronic communications network (within the meaning of section 32 of the Communications Act 2003).

Ron Marchant
Comptroller-General of Patents, Designs and Trade Marks
17 May 2005

7. Guidance and notes on the directions

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

The Interpretation Act 1978 applies to these directions. Therefore, all the definitions set out in that 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.

Where observations are submitted which do not comply with the directions, the comptroller may treat the observations as not having been delivered (see section 124A(3) of the Act).

Observations may be submitted as an attachment to an email. The comptroller will try to read attachments in any format, but Microsoft® Word, WordPerfect®, Portable Document Format (PDF) or plain text (RFC822 compliant) are preferred.

Observations sent by email will receive an automatic acknowledgement when they are received by the comptroller.

Computer programs should not be submitted as part of any observations. They will be considered illegible under paragraph 11 of the directions and consequently the whole of the observations may be treated as not having been delivered.

Any queries about these directions should be addressed to:

Intellectual Property Office
Room 3Y26
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom

Telephone: +44(0)16 3381 4332

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