Participating Offices

United Kingdom

Notifications

Date: September 30, 2009

The United Kingdom Intellectual Property Office notified the International Bureau in accordance with paragraphs 10 and 12 of the Framework Provisions that it would commence operation as both a depositing Office and an accessing Office with effect from 4 October 2009.

The legal basis for recognition of priority documents made available through the service is Rule 8(4)(b) of the Patents Rules 2007, which waives the requirement for a copy of a priority application to be furnished where it is available to the comptroller. Rule 2(3) states that a document is available to the comptroller where it is in electronic storage and he can access it by using electronic communications.

In order for Rule 8(4)(b) to apply, the document must be available to the comptroller by the end of the period in which it would normally have to be furnished (“the relevant period”). If a priority document temporarily cannot be retrieved by the Office from the service, but a certificate in accordance with paragraph 13 of the Framework Provisions states that the document was available to the Office before the end of the relevant period, the document may be retrieved later with no further action required by the applicant.

If a priority document ultimately cannot be retrieved by the Office from the service, the applicant may be required to furnish a copy of the document in accordance with Rule 8(2) of the Patents Rules 2007. If the priority document cannot be furnished before the end of the relevant period, the period can be extended in two month tranches in accordance with Rule 108.

Following consultation with the Consultative Group and designation by the International Bureau on 22 September 2009, the scope of the Office’s participating digital library (hosted by the International Bureau) which it makes available as a depositing Office extends to all national patent applications filed at the Office in electronic form which the applicant specifically requests be made available to the service.

As an accessing Office, the Office will recognise priority documents available to it through the service for the purposes of any application for which the time for furnishing the priority document has not expired by 4th October 2009.

Technical arrangements

• All documents and information will be exchanged over PCT-EDI.
• As a depositing Office, the Office has adopted Route A from the alternative entry routes set out in the system architecture described in Annex I of document WIPO/DAS/PD/WG/2/4.

Practical information

• A request to the Office to make an application available through the service may be made at the time of filing by checking the relevant box in the Office’s electronic filing system, or after filing by sending a letter clearly stating the relevant application number and indicating that it should be made available to the Priority Document Access Service (provided that the application was filed electronically).
• To request the Office as accessing Office to retrieve a priority document from the service, the applicant should check the relevant box in the Office’s electronic filing system, or for paper-filed applications, indicate in a covering letter or on Patents Form 1 that the document is available via the Priority Document Access Service, along with the date on which it became available. Documents retrieved via the service may also be used to substantiate a reference to an earlier application in accordance with Rule 17(3) of the Patents Rules 2007.
• The Intellectual Property Office will notify an applicant within 30 days if it is unable to retrieve a document from the service. This will ensure that the applicant has enough time to furnish a copy of the document, or to extend the period for doing so if necessary.