--------------------------------  These Directions were revoked on 1 April 2007  --------------------------------

Filing patent applications by electronic means

Introduction

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 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 13 December 2005.

3. The Directions made on 23 January 2005 are hereby revoked.

Interpretation

4. In these Directions:

"appropriate hardware" means either:

  • a smart card reader and a smart card supplied by the Office; or
  • 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 a compact optical disk containing electronic data conforming to ISO 9660: 1988;

"electronic application" means:

  • an application for a patent under the Act; or
  • 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;

"EPO" means the European Patent Office;

"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;

"submission session" means the time during which the user communicates with the Office using the appropriate software and appropriate hardware for the purposes of delivering an electronic application;

"the Rules" means the Patents Rules 1995;

"user" means a person using the appropriate software and appropriate hardware to deliver an electronic application;

"WIPO" means the World Intellectual Property Organisation;

"wrapped" means one or more files contained in a single ZIP file;

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.

Filing of patent applications

7. An electronic application may be delivered either online or on digital media, except that no electronic application may be submitted by a person who has not registered with the Office.

8. An electronic application delivered online shall be submitted using the appropriate software.

9. An electronic application may only be sent from a computer that uses a version of Microsoft Windows® supported by the Office.

Preparation of documents

10. An electronic application, including any documents listed in paragraphs 18 or 19, shall be wrapped, signed and encrypted using the appropriate software and appropriate hardware.

11. The user may deliver documents related to the electronic application in their original format. These documents shall be wrapped and shall be delivered at the same time as the electronic application.

12. The documents mentioned in paragraph 11 shall not be part of the application. They shall only be used in the subsequent processing of the electronic application for verification of its contents at the time it was delivered.

13. Any requirement of the Rules -

  • to deliver more than one copy of a document; or
  • to use a particular form;

shall not apply where the document is delivered to the comptroller in accordance with these Directions.

Sequence listings

14. Where sequence listings form part of an electronic application the listings shall comply with WIPO standard ST.25.

Illegible or incomplete documents and infected files

15. 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.

16. 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.

17. Where a document is treated as not complying with these Directions under paragraph 15 or 16, provided the user can be identified, he shall be notified of this fact by the Office.

Other documents

18. 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 3/77
  • Patents Form 7/77
  • Patents Form 8A/77
  • Patents Form 9A/77
  • Patents Form 10/77
  • Patents Form 23/77
  • 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.

19. 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 the electronic application:

  • 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

20. 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.

21. In paragraph 20:

"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.

Online filing

22. A user may only deliver an electronic application online if he has:

  • an account with the Office;
  • registered with the Office;
  • registered for PKI certification

23. An electronic application shall be sent online to the electronic address (URL address) provided to the user for that purpose by the Office.

24. An electronic application can be sent online at any time, except between 01:00 and 04:00 hours UK time.

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 18 or 19)) 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 during the submission session.

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. Fees may be paid 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 to:

    Barclays Bank Plc,
    Cardiff & South East Wales Corporate Banking Team
    PO Box 674
    3rd Floor, Corporate Team
    121 Queen Street
    Cardiff
    CF10 2XU

    sort code: 20-18-15
    account number: 80531766
    swift code: BARCGB2220181580531766
    IBAN: GB31BARC20181580531766 ; or
  • by cheque made payable to "The Patent Office".

Ron Marchant
Comptroller-General of Patents, Designs and Trade Marks
7 December 2005

For background and additional information please refer to guidance and notes on the Directions.

These Directions incorporate a reference to version 3.20 of the EPO online services software. The reference was introduced by a Direction effective from 26 February 2007.