Patents Act 1977

81 Conversion of European patent applications. U.K.

(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patent (UK) shall be treated as an application for a patent under this Act [F1 where the application is deemed to be withdrawn under the provisions of the European Patent Convention relating to the time for forwarding applications to the European Patent Office]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 F2 ...—

(a) F2 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(b) [F3 that] ,—

(i) the applicant requests the comptroller within the relevant prescribed period (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 a request that the application should be converted into an application under this Act, together with a copy of the application; and

(c) [F4 that] the applicant within the relevant prescribed period pays the [F5 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.

(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, 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 [F6 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.

Textual Amendments

F1 Words in s. 81(1) substituted (13.12.2007) by Patents Act 2004 (c. 16), s. 17(1), Sch. 1 para. 5(2); S.I. 2007/3396, art. 2(j)

F2 S. 81(2)(a) and word repealed (13.12.2007) by Patents Act 2004 (c. 16), s. 17(1), Sch. 1 para. 5(3)(a), Sch. 3; S.I. 2007/3396, art. 2(i)(j)

F3 Word in s. 81(2)(b) substituted (13.12.2007) by Patents Act 2004 (c. 16), s. 17(1), Sch. 1 para. 5(3)(b); S.I. 2007/3396, art. 2(j)

F4 Word in s. 81(2)(c) substituted (13.12.2007) by Patents Act 2004 (c. 16), s. 17(1), Sch. 1 para. 5(3)(c); S.I. 2007/3396, art. 2(j)

F5 Words in s. 81(2)(c) substituted (1.1.2005) by The Regulatory Reform (Patents) Order 2004 (S.I. 2004/2357), arts. 1(2), 15(2) (with arts. 20-23)

F6 Word in s. 81(3)(d) inserted (1.1.2005) by The Regulatory Reform (Patents) Order 2004 (S.I. 2004/2357), arts. 1(2), 15(3) (with arts. 20-23)