Section 81

Conversion of European patent applications

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81.-(1) The comptroller may direct that on compliance with the relevant conditions mentioned in subsection (2) below an application for a European patent (UK) shall be treated as an application for a patent under this Act where the application is deemed to be withdrawn under the provisions of the European Patent Convention relating to the time for forwarding applications to the European Patent Office

(2) The relevant conditions referred to above are

  • (a) [deleted - see notes]
  • (b) that-
    • (i) the applicant requests the comptroller within the relevant prescribed period [Rule 58: within 3 months of notification] (where the application was filed with the Patent Office) to give a direction under this section, or
    • (ii) the central industrial property office of a country which is party to the convention, other than the United Kingdom, with which the application was filed transmits within the relevant prescribed period [Rule 59: 4 months] a request that the application should be converted into an application under this Act, together with a copy of the application; and
  • (c) that the applicant within the relevant prescribed period pays the application fee and if the application is in a language other than English, files a translation into English of the application and of any amendments previously made in accordance with the convention.

[Rule 60: request for substantive examination 2 years from priority/filing date]

(3) Where an application for a European patent falls to be treated as an application for a patent under this Act by virtue of a direction under this section -

  • (a) the date which is the date of filing the application under the European Patent Convention shall be treated as its date of filing for the purposes of this Act, but if that date is re-dated under the convention to a later date, that later date shall be treated for those purposes as the date of filing the application;
  • (b) if the application satisfies a requirement of the convention corresponding to any of the requirements of this Act or rules designated as formal requirements [Rule 25], it shall be treated as satisfying that formal requirement;
  • (c) any document filed with the European Patent Office under any provision of the convention corresponding to any of the following provisions of this Act, that is to say, sections 2(4)(c), 5, 13(2) and 14, or any rule made for the purposes of any of those provisions, shall be treated as filed with the Patent Office under that provision or rule; and
  • (d) the comptroller shall refer the application for only so much of the examination and search required by sections 15A, 17 and 18 above as he considers appropriate in view of any examination and search carried out under the convention, and those sections shall apply with any necessary modifications accordingly.

Manual of Patent Practice

Amendments to subsections 1 and 2 made by Schedule 1 of the Patents Act 2004, as commenced by the Patents Act 2004 (Commencement No. 4 and Transitional Provisions) Order 2007 SI 2007 No. 3396, from 13 December 2007.

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