--------------------------- These Directions were revoked on 17 December 2007 ---------------------------
Directions under section 124A of the Patents Act 1977
[Ref. PD/EFD/7]
Filing patent applications by electronic means
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 come into force on 1st April 2007.
3. The Directions given on 7th December 2005 are revoked.
Interpretation
4. In these Directions:
“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 2.20 or version 3.20 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 application” means:
(a) an application for a patent under the Act; or
(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 6(6) of the Rules;
“smart–card application” means an electronic application processed using the appropriate software and appropriate hardware;
“the Rules” means the Patents Rules 1995;
“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.
5. 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, “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.
Preparation of documents
7. 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.
8. The documents mentioned in paragraph 7 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.
9. Any requirement of the Rules—
(a) to deliver more than one copy of a document; or
(b) to use a particular form;
shall not apply where the document is delivered to the comptroller in accordance with these Directions.
Sequence listings
10. Where sequence listings form part of an electronic application the listings shall comply with any requirements under the Patent Co–operation Treaty relating to the presentation of listings.
Illegible or incomplete documents and infected files
11. 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.
12. 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.
13. Where a document is treated as not complying with these Directions under paragraph 11 or 12, provided the user can be identified, he shall be notified of this fact by the Office.
Other documents
14. 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 7/77
Patents Form 9A/77
Patents Form 10/77
a copy of a priority application where that application was filed with the United States Patent and Trademark Office
translations of priority applications
covering letter;
and if it is a smart–card application the following documents may also be delivered, using the appropriate software, at the same time as the application:
Patents Form 3/77
Patents Form 8A/77
Patents Form 23/77
15. 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 3/77
Patents Form 7/77
Patents Form 9A/77
Patents Form 10/77
Patents Form 23/77
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 amendment under the Patent Cooperation Treaty
covering letter.
Signatures
16. 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.
17. In paragraph 16:
“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.
Delivery of smart–card applications
18. 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.
19. A smart–card application may only be sent from a computer that uses a version of Microsoft Windows® supported by the Office.
Online filing
20. An electronic application can be sent online at any time, except between 01.00 and 04.00 hours UK time.
21. A user may only deliver a web application if he also submits his email address.
22. A user may only deliver a smart–card application online if he has:
an account with the Office;
registered with the Office; and
registered for PKI certification.
23. A smart–card application delivered online shall be submitted using the appropriate software.
24. 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 using digital media
25. An application for a patent delivered on digital media must be accompanied by a paper document identifying:
that the digital media contains an application for a patent;
the person applying for a patent or contain information sufficient to enable that person to be contacted by the Office;
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 14 or 15)) which are stored on the digital media.
Acknowledgment and time of delivery
26. Where an electronic application has been delivered online, in accordance with these Directions, an acknowledgement (“the receipt”) will be issued to the user electronically.
27. Where no receipt is issued in accordance with paragraph 26, the electronic application will be treated as not complying with these Directions.
28. The receipt will specify:
the date and time of delivery at the Office;
the application number allocated to the electronic application; and
a list of the Patents Forms and documents delivered at the same time as the electronic application.
29. The receipt for an electronic application delivered on digital media will include the information referred to in paragraph 28, but will be sent to the user by post.
Payment of fees
30. Where a Patents Form or other document is required by the Patents (Fees) Rules 1998 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 is filed with a web application, the fee shall be paid via the web interface at the time of making the application.
32. Fees payable with a web application may be paid using a deposit account held with the Office or by credit–card or debit–card.
33. Fees may be paid on a smart–card application by one of the following methods:
from a deposit account held with the Office;
by a credit–card or debit–card registered with the Office for that purpose;
by bank transfer; or
by cheque.
RON
MARCHANT
Comptroller–General of Patents, Designs and Trade
Marks
16 March 2007
For background and additional information please refer to guidance and notes on the Directions.