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 in the following cases:—

(a) where the application is deemed to be withdrawn under the provisions of the European Patent Convention relating to the restriction of the processing of applications;

(b) where under the convention the application is deemed to be withdrawn because it has not, within the period required by the convention, been received by the European Patent Office.

(2) The relevant conditions referred to above are that—

(a) in the case of an application falling within subsection (1)(a) above, the European Patent Office transmits a request of the applicant to the Patent Office that his application should be converted into an application under this Act, together with a copy of the files relating to the application;

(b) in the case of an application falling within subsection (1)(b) above,—

(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) in either case the applicant within the relevant prescribed period pays the filing 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 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.