Submitting observations concerning the patentability of an invention

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 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.

Interpretation

3. 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;

Delivery of observations

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

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

6. No document, other than an e-mail containing observations, shall be sent to those e-mail addresses.

Content and format of observations

7. Where observations are sent by e-mail, the e-mail shall contain-

  • the observations; and
  • sufficient information to enable the comptroller to identify the patent application to which the observations relate.

8. 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.

9. No observations sent by e-mail or delivered on digital media shall be encrypted.

Illegible or incomplete observations and infected observations

10. 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.

11. 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.

12. 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.

Acknowledgement

13. 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.

14. 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

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

The reference in these Directions to the ipo.gov.uk domain name was introduced by a Direction effective from 2 April 2007.