Filing patent applications can be a cumbersome task, hence it is important to know the ins-and-outs of the processes to follow. In this article, our own Stephen Waller takes a look at filing applications at the UKIPO (United Kingdom Intellectual Property Office) and answers some FAQs:
• Is there an official or unofficial extension for submitting the translation for PCT Filing, EP Filing, or Direct Filing/Paris Convention? If so, what must be submitted at the 30/31 month, 3 month, or 12 month deadline (respectively)?
For national UK applications Rule 12(9) states that, “Where a date of filing is accorded to an application comprising a foreign-language description, the applicant must be notified of the failure to comply with r.14(1). The comptroller may refuse the application if the applicant fails to file a translation into English or Welsh within two months of such a notification.” Under Rule 108, the period for filing a translation can be extended by an initial two months – under Rule 108(2) – and by one or more further two months periods at the discretion of the Office. The request for an extension must be filed before the expiry of the current period. If the deadline for filing the extension request is missed, reinstatement under 20A(3)(a) may be possible.
With regard to priority documents, where the copy of the priority application is in a foreign language, there is no routine obligation to file a translation, but the applicant may be directed to do so under Rule 9(1) if the examiner thinks necessary. Where a translation is required, there is no obligation that it must be verified.
Under the London agreement it is no longer necessary to file a translation for validation of a European patent in the UK (regardless of whether the European patent was published in English, French or German).
For UK national phase applications from a PCT, a translation into English (or Welsh) must normally be filed within 31 months from the priority date (Section 89A(3) and Rule 66). If this deadline is missed, Rule 108 again applies, providing the possibility of a two month extension as of right with further two month extensions at the discretion of the Office, with the possibility of reinstatement under Section 20A(3)(a) if the request for extension is filed late.
Note, due to the location of the UK Intellectual Property Office in Wales, documents can be filed in the Welsh language without any requirement for translation into English.
• What time does the patent office close for filing on any given day?
The Office closes at midnight for the filing of applications, forms and other documents. The Office opens to the public at 9am but it is possible to hand in documents prior to that time. After 5pm and before 9am the following working day, documents can be handed to the custodian. During the night, it may be necessary to use the telephone at the gatehouse in order to gain access to the Newport office.
• Are applications filed on-line or physically at the patent office?
Applications can be filed using the postal services, fax, the Office’s e-filing services or by hand delivery to the Newport or London office. We generally use electronic filing.
• Is the patent office open on Saturday and/or Sunday?
The Office is not taken to be closed at any time for the purposes of filing new applications in respect of which no priority declaration under s.5(2) is made.
For the purposes of filing applications in respect of which a priority declaration under s.5(2) is made, and for the purposes of filing other forms and documents, the Office is closed all day on Saturday and Sunday and public holidays. The deadline for filing applications on such days is extended until the following Monday.
Good Friday, Christmas Day, and any day specified as or proclaimed to be a bank holiday in England, in or under section 1 of the Banking and Financial Dealings Act 1971, are excluded days for the purposes of all business, except for the filing of applications in respect of which no declaration for the purposes of s.5(2) is made. All Saturdays immediately preceded by one of the above and all Sundays are also excluded days for the purposes of all business, except for the filing of applications in respect of which no declaration for the purposes of s.5(2) is made. All other Saturdays are similarly excluded except for the filing of applications in respect of which no declaration for the purposes of s.5(2) is made).
• If a filing deadline falls on a Saturday or Sunday, does the filing deadline default to the Friday prior or Monday after?
The filing deadline for such applications is extended until the following Monday.
For more information, contact Stephen Waller, European Patent Attorney.