PCT Applicant's Guide United Kingdom EQE - Valid as from 31 Oct 2024

GENERAL INFO
RO
BIO
NATIONAL CHAPTER

Materials for the European Qualifying Examination (EQE)
Special edition as of 31 October 2024, prepared for EQE candidates

Useful information

The PCT Applicant’s Guide is updated almost every week with information received by the International Bureau.

In case of question, please contact the Office or the International Bureau: pct.guide@wipo.int.

List of abbreviations used in this document:

Office: Intellectual Property Office (United Kingdom)

PA: Patents Act 1977 (as amended)

PR: Patents Rules 2007 (as amended)

List of currencies used in this document:

GBP (Pound sterling)

Countries and Offices information:

The list of acronyms used for Offices is no longer shown as it has been integrated in the mouseover functionality for each ST.3 code shown in this document.
Refer to List of WIPO Standards, Recommendations and Guidelines formerly Annex K, List of country names and two-letter codes. It includes a list of short names and two-letter codes accepted for use in indicating States, other entities and intergovernmental organizations and their Offices in documents relating to international applications under the PCT. The list is as set out in WIPO Standard ST.3.
Also refer to PCT Contracting States formerly Annex A.

Office profile

For more technical information about the Office, refer to ePCT Office profile.

PCT Reservations, Declarations, Notifications and Incompatibilities

The Office does not have any reservations, declarations, notifications or incompatibilities.
Refer to the full list.

Office Closed dates

The Office is closed weekly on Saturday and Sunday

Additional closed dates can be consulted on the Office Closed dates page

International Phase

Annex B - Information on Contracting States or Intergovernmental Organization

Contracting State:

United Kingdom

Two-letter code:

Name of Office:

Intellectual Property Office is an operating name of the Patent Office.

Intellectual Property Office (United Kingdom)

Location:

All postal correspondence must be sent to the Newport address.

Concept House
Cardiff Road
Newport
South Wales NP10 8QQ
United Kingdom

Filings by hand may additionally be made at:

The London address should be used for hand filings only.

3^rd Floor
10 Victoria Street
London SW1H 0NB
United Kingdom

Mailing address:

Same as above

Telephone:

For international applications
(44-1633) 81 45 86

Operator service
(44-1633) 81 40 00

Minicom number for deaf or hard of hearing
(44-3000) 20 00 15

Within the United Kingdom
0300 300 2000

E-mail:

For PCT enquiries only
pct@ipo.gov.uk

For general enquiries only
information@ipo.gov.uk

Website:

http://www.gov.uk/government/organisations/intellectual-property-office

Facsimile:

None

Does the Office accept the filing of documents by facsimile or the like means (PCT Rule 92.4)?

The following address should be used for the filing of documents by e-mail: forms@ipo.gov.uk.

Yes, by e-mail

Which kinds of documents may be so transmitted?

All kinds of documents

Must the original of the document be furnished in all cases?

No, only upon invitation

Does the Office send notifications via e-mail in respect of international applications?

Would the Office accept evidence of mailing a document, in case of loss or delay, where a delivery service other than the postal authorities is used (PCT Rule 82.1)?

Yes

Is the Office prepared to allow applicants to make applications available to the WIPO Digital Access Service for Priority Documents (DAS) (PCT Rule 17.1(b-bis)?

For further details on how to request this Office to make applications available to DAS refer to http://www.gov.uk/government/publications/how-to-file-documents-with-the-intellectual-property-office.

Yes, the Office is prepared to allow applicants to make national applications filed in electronic form available to the WIPO DAS

Competent receiving Office(s) for international applications filed by nationals or residents of this State:

EP,

GB,

Does national legislation restrict the filing of international applications with foreign Offices?

Patents Act 1977, Section 23.

Yes, filing restrictions apply to:

Applications by residents

In most cases, a United Kingdom resident may file an application direct at the European Patent Office or at the International Bureau of WIPO. However, restrictions apply where the application contains information which relates to military technology or which might be prejudicial to United Kingdom national security or the safety of the public. In these cases, a United Kingdom resident may only file such an application direct at the European Patent Office or at the International Bureau of WIPO: (i) after having obtained written authorization from the Office; or (ii) after an application for a patent for the same invention has been filed at the Office and not less than six weeks have elapsed without the Comptroller of the Office giving a direction prohibiting publication or communication of the invention. These restrictions do not apply to an application for a patent for an invention for which an application for a patent has first been filed in a country outside the United Kingdom by a person resident outside the United Kingdom. Further details can be obtained from the Office: Security Section, Concept House, Cardiff Road, Newport, South Wales, NP10 8QQ; tel: (44-1633) 81 35 58.

Competent designated (or elected) Office(s) for this State:

National protection: GB

European patent: EP

Types of protection available via the PCT:

National:

Patents

European:

Patents

Payment methods accepted by the Office:

The payment of fees must be effected in pounds sterling. All payments must be made together with the filing of the form related to the fee to be paid, and indicate the application number (national, if already known; international, if the national application number is not yet known), the name of the applicant and the type of the fee being paid.

The Office does not accept bank card payments for international patent fees (except for the transmittal fee). Details are available at Intellectual Property Office: how to pay us - https://www.gov.uk/government/publications/intellectual-property-office-how-to-pay-us

Fees may be paid by any of the following means:
— by certain types of credit/debit card;
— by cheque drawn on a UK clearing bank;
— by debit to a client deposit account held by the Office;
— by direct bank-to-bank transfer to:

Barclays Bank Plc.
3^rd Floor Windsor Court
3 Windsor Place
Cardiff
CF10 3ZL

Sort Code
20-18-23

SWIFT
BARCGB22

IBAN
GB92 BARC 2018 2380 5317 66

For the credit of the Intellectual Property Office (United Kingdom) account 80531766; in cash at the Office.

Fees paid by a cheque expressed in pounds sterling are regarded as being paid on the day of receipt of the cheque in the Office. Where cheques expressed in other currencies are received, there will be a delay while realisation into pounds sterling takes place (also, owing to currency fluctuations, an underpayment could result); it is therefore recommended that pound sterling cheques only should be paid. Cheques should be made payable to “UK Intellectual Property Office.” Fees paid by bank-to-bank transfer are regarded as being received at the date on which the bank credits the money to the Intellectual Property Office (United Kingdom) account 80531766; however, bank-to-bank transfers are likely to incur bank charges which may result in underpayment of fees. These must be met by the applicant and therefore should be covered in the applicant’s instruction to the bank. The application/renewal documents relating to the payment of fees should be supported by a Fee Sheet or equivalent form listing individual fees. A reference (e.g., patent or deposit account number) should be quoted to link payment with any forms sent separately; this is essential when a bank-to-bank transfer is made.

Availability under the national law for an international-type search (PCT Article 15):

None

Provisional protection after international publication:

Where the designation is made for the purposes of a national patent:

Refer to Sections 89, 89A and 89B of the Patents Act 1977. The publication of the international application in English by the International Bureau of WIPO, or of the translation into English by the Intellectual Property Office5 (United Kingdom), gives the applicant generally the same right as he would have had, if the patent had been granted on the date of publication of the application or of the translation, to bring proceedings in the court or before the Comptroller for damages in respect of any act which would have infringed a patent. However, such proceedings may only be brought after grant of the patent. Section 89B(3), in addition, gives effect to the option specified in PCT Article 29(2)(iii)

Where the designation is made for the purposes of a European patent:

Refer to Sections 78(7) and 79(3) of the Patents Act 1977

(1) International application published in English: the right referred to above applies once the application has been published by the International Bureau of WIPO

(2) International application published in French or German: the right referred to in paragraph (1) does not become effective until a translation into English of the claims has been filed at, and published by, the Intellectual Property Office (United Kingdom) and the prescribed fee paid, or unless the applicant has supplied the infringer, before the infringing act occurred, with a translation into English of the claims

(3) International application published in a language which is not an EPO official language: the right referred to above does not become effective until the EPO republishes the international application supplied to it in one of its official languages except that if the EPO republishes the application in French or German, paragraph (2) applies

Information of interest if this Contracting State is designated (or elected)

For national protection

Time when the name and address of the inventor must be given:

May be in the request or must be furnished within 33 months from the priority date

Are there special provisions concerning the deposit of microorganisms and other biological material?

Yes, refer to Annex L.

For a European patent

Refer to Annex B(EP)

Annex C - Receiving Office

Competent receiving Office for nationals and residents of:

By virtue of the British Nationality Act 1981, United Kingdom nationality is afforded to British Citizens, British Dependent Territories Citizens, British Overseas Citizens, British Subjects and British Protected Persons. Questions about the nationality and residence of applicants from dependent territories of the United Kingdom should be referred to the Patents Legal Section, Intellectual Property Office.

United Kingdom, also for residents of the Isle of Man, Gibraltar and the Bailiwick of Guernsey

Language in which international applications may be filed:

If the language in which the international application is filed is not accepted by the International Searching Authority (refer to Annex D), the applicant will have to furnish a translation (PCT Rule 12.3).

English,

Welsh

Language accepted for language-dependent free text in the sequence listing:

Same language as the international application (English or Welsh); or both

Language in which the request may be filed:

English

Number of copies required by the receiving Office if application filed on paper:

Does the receiving Office accept the filing of international applications in electronic form?

Where the international application is filed in electronic form in accordance with and to the extent provided for in Part 7 and Annex F of the Administrative Instructions, the total amount of the international filing fee is reduced (refer to “Fees payable to the RO”).

Where the international application contains a sequence listing as a separate part of the description, this should be furnished in accordance with Annex C of the Administrative Instructions, that is, in compliance with WIPO Standard ST.26 XML format; no fees are due for sequence listings filed in this format.

For the relevant notifications by the Office, refer to PCT Gazette No. 32/2004, pages 18092 et seq., and Official Notices (PCT Gazette) dated 9 September 2011, pages 124 et seq., 28 April 2022, pages 103 et seq. and 4 August 2022, page 206.

Yes, the Office accepts electronic filing via EPO Online Filing or ePCT-Filing

Does the receiving Office accept the submission of pre-conversion documents and, if yes, in which format (Section 706 of the PCT Administrative Instructions)?

Yes, any format

Does the receiving Office accept incorporation by reference (PCT Rule 20.6)?

Yes

Does the receiving Office accept the submission of color drawings on an informal basis and transmit them to the International Bureau?

Yes

Does the receiving Office accept requests for restoration of the right of priority (PCT Rule 26bis.3)?

Yes, the Office applies the “unintentional” criterion to such requests

Competent International Searching Authority:

Competent International Preliminary Examining Authority:

Fees payable to the RO:

Transmittal fee:

75 GBP

International filing fee:

This fee is reduced by 90% if certain conditions apply (refer to Annex C(IB)).

1,197 GBP

Fee per sheet in excess of 30:

This fee is reduced by 90% if certain conditions apply (refer to Annex C(IB)).

13 GBP

Reductions (under Schedule of Fees, item 4):

Electronic filing (the request in character coded format):

180 GBP

Electronic filing (the request, description, claims and abstract in character coded format):

270 GBP

Search fee:

Refer to
Annex D(EP)

Fee for priority document (PCT Rule 17.1(b)):

20 GBP

Fee for requesting restoration of the right of priority (PCT Rule 26bis.3(d)):

150 GBP

Is an agent required by the receiving Office?

Who can act as agent?

Any individual, partnership or body corporate who resides in or has a place of business in the United Kingdom, the Isle of Man or a Member State of the European Economic Area (EEA)

For international applications filed on or after 1 January 2021, any agent appointed must have an address for service in the United Kingdom, the Isle of Man, the Channel Islands or Gibraltar.

A list of registered patent attorneys may be obtained from the following address: The Registrar, c/o The Chartered Institute of Patent Attorneys, 2^nd Floor Halton House, 20-23 Holborn, London, EC1N 2JD

E-mail: mail@cipa.org.uk; Internet: http://www.cipa.org.uk; telephone: (44-20) 74 05 94 50; facsimile: (44-20) 74 30 04 71.

Waiver of power of attorney:

Waivers of powers of attorney do not apply (PCT Rule 90.4(e) and 90.5(d)) where the agent or common representative submits any notice of withdrawal during the international phase (PCT Rule 90bis.1 to 90bis.4, also refer to International Phase, paragraph 11.048).

Has the Office waived the requirement that a separate power of attorney be submitted?

Yes

Particular instances in which a separate power of attorney is required:

Where an agent or common representative who is not indicated on the request form at the time of filing performs any action after filing; or where it is unclear that an agent or common representative has power to act on behalf of the applicant.

Has the Office waived the requirement that a copy of a general power of attorney be submitted?

Yes

Particular instances in which a copy of a general power of attorney is required:

Annex L - Deposits of Microorganisms and Other Biological Material

Requirements of designated and elected Offices

Only Offices whose applicable national law contains provisions concerning the deposits of microorganisms and other biological material are listed in Annex L. Unless otherwise indicated, deposits may be made for the purposes of patent procedure before these Offices with any depositary institution having acquired the status of international depositary authority under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure.

For a list of these institutions refer to:

http://www.wipo.int/treaties/en/registration/budapest/pdf/idalist.pdf (and the detailed requirements for each institution at: https://www.wipo.int/budapest/en/guide/section_d/subsection_c.html)

Notifications related thereto may be consulted under:

http://www.wipo.int/treaties/en/registration/budapest/

Further information concerning the requirements of international depository authorities under the Budapest Treaty is available at:

http://www.wipo.int/budapest/en/guide/index.html

Time (if any) earlier than 16 months from priority date by which applicant must furnish:

— the indications prescribed in Rule 13bis.3(a)(i) to (iii):

Where the applicant requests publication earlier than 16 months from the priority date, not later than that request

— any additional indications:

At the time of filing

Additional indications (if any) which must be given besides those prescribed in Rule 13bis.3(a)(i) to (iii) pursuant to notifications from the Office:

The specification of the application as-filed must contain such relevant information as is available to the applicant on the characteristics of the biological material.

Additional information

Deposits may also be made for the purposes of patent procedure before the Intellectual Property Office (United Kingdom) with any depositary institution anywhere in the world. It is the responsibility of the applicant to select the depositary institution with which they wish to make their deposit and to ensure that samples of the biological material deposited will be made available in accordance with Rule 13(1) and Schedule 1 of the UK Patents Rules 2007. The applicant may give notice in writing to the International Bureau before technical preparations for publication of the international application are completed that a sample should be made available only to an expert (preferably by using Form PCT/RO/134).

WARNING: Where the invention involves the use of or concerns biological material which is not available to the public at the date of filing the application and which has been deposited by a person other than the applicant, the applicant must supply the following within 16 months from the priority date (or, if earlier, not later than a request for early publication):

(i) the name and address of the depositor; and

(ii) a statement by the depositor authorising the applicant to refer to the deposited material in the application and giving the depositor’s irrevocable authorisation for the deposited material to be made available to the public in accordance with Schedule 1 to the UK Patents Rules 2007.

National Phase

Summary of requirements for entry into the national phase

Time limits applicable for entry into the national phase:

Under PCT Article 22(3): 31 months from the priority date
Under PCT Article 39(1)(b): 31 months from the priority date

Does the Office permit reinstatement of rights (PCT Rule 49.6)?

Yes, the Office permits reinstatement of rights under the “unintentional” criterion.

Fee for reinstatement

150 GBP

Translation of international application required into (one of) the following language(s):

Must be furnished or paid within the time limit applicable under PCT Article 22 or 39(1), or at the time of any earlier express request by the applicant to proceed earlier with the national phase.

English

Required contents of the translation for entry into the national phase:

Must be furnished or paid within the time limit applicable under PCT Article 22 or 39(1), or at the time of any earlier express request by the applicant to proceed earlier with the national phase.

Where the translation of an amendment has not been furnished within the applicable time limit (refer to Patents Act 1977, Section 23), the amendment will be disregarded. However, where the applicant has furnished a translation either of the amendment or of the international application as originally filed, but not both, the Office will, at the expiry of the applicable time limit, invite the applicant to supply the missing translation.

Where the applicant expressly requests entry into the national phase earlier than the time limit applicable under PCT Article 22 or 39(1) and the international application has not been communicated to the Office by the International Bureau, the translation must also contain the request part of the international application and the abstract.

Under PCT Article 22: Description, claims (if amended, both as originally filed and as amended), any text matter of drawings

Under PCT Article 39(1): Description, claims, any text matter of drawings (if any of those parts has been amended, both as originally filed and as amended, including any amendment under PCT Article 19 and also any amendment annexed to the international preliminary examination report)

Is a copy of the international application required in particular circumstances?

A copy is required only if the applicant expressly requests early commencement of the national phase at a time when the Intellectual Property Office (United Kingdom) has not been sent a copy of the international application from the International Bureau under PCT Article 20. The copy must then be furnished when making the request for early commencement of the national phase and may be a copy of the international application as published in accordance with the Treaty in a language other than that in which it was originally filed.

Does the Office accept color drawings under its national law?

No, however the Office may accept greyscale drawings or photographs if there is no other way of visually representing the invention, and provided they can be reproduced clearly in black and white.

National fees:

National fee

Must be furnished or paid within the time limit applicable under PCT Article 22 or 39(1), or at the time of any earlier express request by the applicant to proceed earlier with the national phase.

30 GBP

Excess claims fee for each claim in excess of 25

Excess claims and excess pages fees are payable at the same time as the search fee/substantive examination fee; they may also be payable at grant if the number of claims and pages increase during the processing of the application. If this is the case the Office will invite the applicant to pay a grant fee by filing a Form 34.

20 GBP

Excess pages fee for each page of description over 35

10 GBP

Search fee:

Due within 33 months from the priority date. Where the applicant expressly requests early entry into the national phase, the fee is due within 12 months from the priority date, or two months from the date on which the conditions for early entry are satisfied, whichever is the later.

— where a search has already been made by an International Searching Authority in accordance with the PCT

150 GBP

— when search/substantive examination is requested electronically

reduced by 30 GBP

— in other cases:

180 GBP

— when search/substantive examination is requested electronically

reduced by 30 GBP

Substantive examination fee

Due within 33 months from the priority date.

130 GBP

— when search/substantive examination is requested electronically

reduced by 30 GBP

Exemptions, reductions or refunds of fees:

Refer to http://www.gov.uk/government/publications/how-to-file-documents-with-the-intellectual-property-office for further details of the methods of electronic filing accepted by the Office.

Search fee: reduced fee payable where an international search report has been established (refer above). 30 GBP reduction in search fee or examination fee where request for search or substantive examination is filed in electronic form using a method of electronic communication accepted by the Office . Refund of whole fee where the application does not proceed to substantive examination and no search has been made in the Intellectual Property Office (United Kingdom)

Special requirements of the Office (PCT Rule 51bis):

Name and address of the inventor if they have not been furnished in the “Request” part of the international application

Must be furnished within 33 months from the priority date. Where the applicant expressly requests early entry into the national phase, the name and address of the inventor must be furnished within 16 months from the priority date, or two months from the date on which the conditions for early entry are satisfied, whichever is the later (unless already furnished in the “Request”).

This requirement may be satisfied if the corresponding declaration has been made in accordance with PCT Rule 4.17.

No representation by an agent is required but an address for service in the United Kingdom, the Isle of Man, the Channel Islands or Gibraltar is necessary (refer to Address for Service, paragraph GB.04)

If not already complied with within the time limit applicable under PCT Article 22 or 39(1), the Office will invite the applicant to comply with the requirement within a time limit fixed in the invitation.

Who can act as agent?

Any individual, partnership or body corporate who resides in or has a place of business in the United Kingdom, the Isle of Man or a Member State of the European Economic Area (EEA). A list of registered patent attorneys may be obtained from the following address:

The Registrar, c/o The Chartered Institute of Patent Attorneys
2^nd Floor Halton House
20-23 Holborn
London, EC1N 2JD

Does the Office accept the effect of restoration of the right of priority by the receiving Office (PCT Rule 49ter.1)?

Yes

Does the Office accept requests for restoration of the right of priority (PCT Rule 49ter.2)?

Yes, the Office applies the “unintentional” criterion to such requests.

The procedure in the national Phase

GB.01 FORM FOR ENTERING THE NATIONAL PHASE

Refer to http://www.gov.uk/government/publications/how-to-file-documents-with-the-intellectual-property-office for further details of the Office’s online filing services.

The Office has available a special form, Form NP1, for payment of the national fee and for providing details of an international application entering the national phase. Applicants are strongly recommended to use this form. The form may be filed electronically via the Office’s website or EPO online services .

GB.02 TRANSLATION (CORRECTION)

PR Rule 105
Errors in the translation of the international application can be corrected with reference to the text of the international application as filed (refer to National Phase, paragraphs 6.002 and 6.003). A request for correction must be made in writing and identify the proposed correction.

GB.03 FEES (MANNER OF PAYMENT)

The manner of payment of the fees indicated in the Summary and in this Chapter is outlined in Annex GB.I.

GB.04 ADDRESS FOR SERVICE

PR Rules 101, PR Rules 103
An applicant, whether or not he is a national of or a resident in the United Kingdom, is not required to be represented by an agent, but he is required to have an address for service (of notices and other communications) in the United Kingdom, the Isle of Man, the Channel Islands or Gibraltar for the purpose of his application. Every person (including the applicant for, or proprietor of, a patent), concerned in any contested proceedings to which the Patents Rules 2007 relate, must furnish the Office with an address for service in the United Kingdom, the Isle of Man, the Channel Islands or Gibraltar. If an agent is appointed to represent the applicant for the entry into the national phase, a written authorization is not required, though the agent must be prepared to prove his authority to act if called upon to do so by the Office. If an agent is appointed after the national phase has begun or one agent is substituted for another, written authorization should be filed on Patents Form 51.

GB.05 DESIGNATION OF THE INVENTOR

PA Sec. 13(2), PA Sec. 89B(1)(c), PR Rules 68(1), PR Rules 68(2)
Any statement of the name of the inventor under the Treaty is treated as a statement filed under the national law. Otherwise details should be given on Patents Form 7. Legalization is not required. For time limits, refer to the Summary.

GB.06 RESTORATION OF THE RIGHT OF PRIORITY

PCT Rule 49ter.2, PA Sec. 5(2B), PR Rules 7, PR Rules 66(3)
Where the international application was filed within two months from the end of the period for claiming priority of an earlier application, a request may be made to the Office in accordance with the national law to make a late declaration of priority (refer to National Phase, paragraphs 6.006 - 6.011). Such a request will be allowed if the Office is satisfied that the failure to file the application within the 12 month priority period was unintentional. The request must be made on Patents Form 3 and must be supported by evidence of why the international application was not filed before the end of the priority period. The time limit for filing the request is one month from the date of entry into the national phase.

GB.07 PRELIMINARY EXAMINATION AND REQUEST FOR SEARCH

PA Sec. 15A, PA Sec. 17(1), PR Rules 68(1), PR Rules 68(2), PR Rules 106
Preliminary examination (as to formal requirements) will be performed shortly after payment of the national fee upon entry into the national phase. Search must be requested on Patents Form 9A together with the payment of the fee for search indicated in Annex GB.I within the time limits stated in the Summary. Where an international search report has been established, a reduced search fee is payable (refer to the Summary). A further reduction to the search fee is applicable when Patents Form 9A is filed electronically. If the application includes more than 25 claims, an excess claims fee of GBP 20 per claim is also payable with the Form 9A. For the request for substantive examination, refer to paragraph GB.09.

GB.08 REQUEST FOR PUBLICATION OF TRANSLATION

PA Sec. 69, PA Sec. 89A(6), PA Sec. 89B(3)
If the international application has not been published by the International Bureau in English, the English translation furnished by the applicant will be published by the Office ex officio. However, if the applicant wants to secure the rights conferred by that publication (refer to International Phase, Annex B(GB), “Provisional protection after international publication”), he must file a request in writing for publication of the translation or complete Part 6 of Form NP1 and pay the publication fee (refer to Annex GB.I). That request can be filed at any time after the start of the national phase. However, it is advisable to request publication when entering the national phase.

GB.09 REQUEST FOR SUBSTANTIVE EXAMINATION

PA Sec. 18(1), PR Rule 68(1), PR Rule 68(4)
A patent will be granted only after examination as to patentability, which must be requested by the applicant. The request for substantive examination must be made on Patents Form 10.

The Office’s combined search and examination procedure for applications on which Patents Forms 9A and 10 are filed together does not apply to applications entering the national phase where an international search report has been established. The time limits for requesting substantive examination and the required fee are as stated in the Summary. A reduced examination fee is payable when Patents Form 10 is filed electronically. If the application includes more than 35 pages of description, an excess pages fee of GBP 10 per page is also payable with the Form 10.

GB.10 TRANSLATION OF REFERENCES CITED IN THE INTERNATIONAL SEARCH REPORT OR INTERNATIONAL PRELIMINARY EXAMINATION REPORT

PR Rules 108(1), PR Rules 113(5), PR Rules 113(6)
The Office may request the applicant to furnish a translation into English of any document referred to in the international search report or international preliminary report on patentability or cited in the international preliminary examination report. Such a translation must be filed within two months of the date of the request. There is no form for the furnishing of the translation. This time limit of two months may be extended by the Office if it thinks fit; a request for an extension should be made in writing (there is no form for this purpose) and may be made even when the two-month time limit has already expired.

GB.11 AMENDMENT OF THE APPLICATION; TIME LIMITS

PCT Art. 28, PCT Art. 41
The applicant may make amendments to the application of his own volition under the following conditions, provided that no new matter is introduced in the disclosure of the invention:

PR Rule 66A, PR Rule 31(3)
(i) before the dispatch of the first substantive examination report:

(a) where an international search report was issued during the international phase, the applicant may amend the specification voluntarily from the date of national phase entry until the date the first substantive examination report is issued;

(b) where no international search report has been issued by the time the application enters the UK national phase, the period within which the applicant may amend voluntarily starts from the date of issue of the UK search report or the international search report (whichever is issued first) and ends on the date the first substantive examination report is issued.

(ii) after the dispatch of the first report referred to in (i), above:

PR Rule 31(4)
(a) amendments to the application may be made only once; such amendments must be made either at the same time as any amendments made so as to comply with the examiner’s report or within two months of the dispatch of the said report when it does not require any amendment;

PR Rule 31(5), PR Rule 31(6), PR Rule 31(1)
(b) any further amendment to the application may be made only with the consent of the Office; in this case, the applicant must provide the reasons for the amendment in writing.

Amendments should be effected by filing replacement pages.

GB.12 CORRECTION OF ERRORS

PA Sec. 14(10), PA Sec. 117, PA Sec. 117A, PR Rules 49(2), PR Rules 105
The applicant may request the correction of an error of translation or transcription or a clerical error or mistake in the application or any document filed in connection therewith at any time. The request must be made in writing and identify the proposed correction. A request for correction of a name must be made on Patents Form 20. Erroneous withdrawals may be corrected in this way but the resuscitated application will be subject to third party terms for the period between the withdrawal of the application and the notice of request for correction being published.

GB.13 PERIOD FOR PUTTING THE APPLICATION IN ORDER

PA Sec. 20, PA Sec. 21, PR Rules 30, PR Rules 108
An application will be treated as having been refused unless it complies with all requirements of the Patents Act and Rules within four years and six months from the priority date or one year from the date of the first substantive examination report (whichever is later), with the possibility of two months’ extension as of right or a longer extension at the discretion of the Office (refer to paragraph GB.17). If a third party files observations relevant to patentability and the first substantive examination report based on those observations is sent during the last three months of the period outlined above, the period becomes three months beginning with the date on which the report is sent.

GB.14 RENEWAL FEES

PA Sec. 25(3), PA Sec. 25(4), PR Rule 36-39
After a patent has been granted, a fee must be paid for maintaining the patent in force, starting with the fifth year counted from the international filing date. Payment must be made each year during the period of three full calendar months which ends on the last day of the month in which the filing date falls. Payment can still be made, together with a surcharge, during a further period of six full months. Where a patent is granted in the last three months of the fourth year, or later, the renewal fee may be paid without surcharge by the end of the third calendar month after the date of grant or, with a surcharge, within six months from the end of these three months. The amounts of the renewal fees and of the surcharge are indicated in Annex GB.I. Form 12 must be filed (refer to also paragraph GB.21).

GB.15 REVIEW UNDER ARTICLE 25 OF THE PCT

PCT Art. 25, PCT Rule 51, PA Sec. 89(3), PA Sec. 89(5), PA Sec. 97(1), PR Rule 71
The applicable procedure is outlined in paragraphs 6.018 to 6.021 of the National Phase. (The Patents Act also includes a similar procedure for which application may be made at any time by writing to the Office with a statement of the facts relied on and paying any fee indicated in Annex GB.I.)

If, upon review under PCT Article 25, the Office finds that the refusal to accord a filing date or declaration that the international application is considered withdrawn was not the result of an error or omission on the part of the receiving Office or the International Bureau, the applicant may ask for a hearing, if he wishes to contest the Office’s view; if the hearing (which the applicant is not obliged to attend in person) maintains the Office’s view, a reasoned written decision will be issued. An appeal may be lodged against such a decision in the Patents Court within 28 days from the decision; it must be accompanied by the related fee indicated in Annex GB.I. An application to extend the 28 day time limit must be made direct to the Court.

GB.16 EXCUSE OF DELAYS IN MEETING TIME LIMITS

PCT Art. 24(2), PCT Art. 48(2)
Reference is made to paragraphs 6.022 to 6.027 of the National Phase.

GB.17 EXTENSION OF TIME LIMITS

PR Rule 108
The time limits for filing Patents Form NP1 (National processing of an international application for a patent (UK)), Patents Form 9A (Request for search), Patents Form 10 (Request for a substantive examination) and, where necessary, Patents Form 7 (Statement of inventorship and of right to grant of a patent) as well as the time limit for putting the application in order may be extended as of right by two months on request and subject to the payment of a fee (refer to Annex GB.I). The request for such an extension may be filed even when the time limit has expired but must be filed before the end of the extension sought using Patents Form 52. Further extensions of two months are possible but only at the discretion of the Office and on filing of Patents Form 52 and fee before the end of the extension sought together with and any evidence required. If an application is terminated owing to a time period not being met then reinstatement may be available (refer to paragraph GB.20 below).

GB.18

PR Rule 108
The other time limits specifically referred to in the Summary may be extended if the Office thinks fit. There is no special form for such a request.

GB.19

PA Sec. 117B, PR Rule 109
Time limits set by the Office (rather than by the Act or Rules) during the national phase may be extended as of right by two months, or if sooner, to the end of the period for putting the application in order (refer to paragraph GB.13). A request for extension must be made in writing and within two months of the expiry of the relevant period. There is no special form for the request.

GB.20 REINSTATEMENT OF AN APPLICATION

PA Sec. 20A, PA Sec. 20B, PR Rule 32
An application that has been terminated because a requirement was not met within a prescribed or specified period may be reinstated on request if the Office is satisfied that the failure to comply with the requirement was unintentional. Reinstatement only applies when no extension of the period is available and may only be requested within 12 months of termination of the application. Third party terms will apply to the period between termination of the application and the publication of the request for reinstatement. A request for reinstatement must be made on Patents Form 14.

GB.21 RESTORATION OF A LAPSED PATENT

PA Sec. 28, PA Sec. 28A, PR Rule 40
If a patent lapses through non-payment of renewal fees, then an application for restoration may be made. For a lapsed patent to be restored the Office must be satisfied that the failure to pay the renewal fee was unintentional. Third party terms will apply to the period between expiry of the patent and the publication of the request for restoration. A request for restoration must be made on Patents Form 16.

GB.22 FORMS

All forms are available online at: http://www.gov.uk/government/publications/patent-forms-and-fees

Annexes

Annex GB.I - Fees

Form NP1

National fee for processing of an international application for a patent (UK)

30 GBP

Form 3

On request for permission to make a late declaration of priority under PA section 5(2B) (PR rules 7(2) and 66(3))

150 GBP

Form 9A

On request for search (PA section 17(1))

This fee is reduced when this form is filed electronically.

— for an international application which has been searched in the international phase

150 GBP

— for any other application

180 GBP

On request for a further search (PA section 17(6)) or payment for a supplementary search (PA section 17(8))

This fee is reduced when this form is filed electronically.

150 GBP

— excess claims fee for each claim filed over 25

20 GBP

Form 10

On request for substantive examination (PR rule 28)

This fee is reduced when this form is filed electronically.

130 GBP

— excess pages fee for each page of description filed over 35

10 GBP

Form 12

On payment of renewal fee:

Only half of the renewal fee is payable if an entry is made in the register to the effect that licences under the patent are to be available as of right.

— for the 5^th year

70 GBP

— for the 6^th year

90 GBP

— for the 7^th year

110 GBP

— for the 8^th year

130 GBP

— for the 9^th year

150 GBP

— for the 10^th year

170 GBP

— for the 11^th year

190 GBP

— for the 12^th year

220 GBP

— for the 13^th year

260 GBP

— for the 14^th year

300 GBP

— for the 15^th year

360 GBP

— for the 16^th year

420 GBP

— for the 17^th year

470 GBP

— for the 18^th year

520 GBP

— for the 19^th year

570 GBP

— for the 20^th year

610 GBP

On extension of the period for payment of a renewal fee:

— not exceeding one month

None

— for each succeeding month (but not exceeding six months)

24 GBP

Form 14

On request for reinstatement of a patent application under PA section 20A (PR rule 32)

150 GBP

Form 16

On request for restoration of a patent under PA section 28 (PR rule 40)

135 GBP

On request for publication of translation under PA section 89A(3) or (5)

12 GBP

Form 34

On request for payment of a grant fee under PR rule 30A

— excess claims fee: for each increase in claims over 25

20 GBP

— excess pages fee: for each increase in pages of description over 35

10 GBP

On application to the Comptroller for an international application to be treated as an application under the Act (PCT Article 25; PA section 89(3) and 89(5))

None

Form 52

On request for extension of a period of time under PR rule 108(2)

135 GBP

On request for extension of a period of time under PR rule 108(3)

135 GBP

On appeal (refer to paragraph GB.15)

235 GBP

How can payment of fees be effected?

Details are available at Intellectual Property Office: how to pay us
https://www.gov.uk/government/publications/intellectual-property-office-how-to-pay-us

Fees may be paid by any of the following means: by certain types of credit/debit card; by cheque drawn on a
UK clearing bank; by debit to a client deposit account held by the Office; by direct bank-to-bank transfer to:

Barclays Bank Plc.
3^rd Floor Windsor Court
3 Windsor Place
Cardiff
CF10 3ZL

Sort Code
20-18-23

SWIFT
BARCGB22

IBAN
GB92 BARC 2018 2380 5317 66

For the credit of the Intellectual Property Office (United Kingdom) account 80531766; in cash at the Office