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Section 15: Date of filing application

Intellectual Property Office

April 3
09:15 2023

15.01

This section states the conditions which are necessary and sufficient for an application to be accorded a filing date, sets out the circumstances in which an application may be re-dated to a later date, makes provision for divisional applications and specifies further conditions which must be fulfilled before an application can proceed.Time limits and other provisions relating to these matters are prescribed in rr.18-22.

15.01.1

Section 15 was amended by the Regulatory Reform (Patents) Order 2004 (S.I. 2004 No. 3204) to incorporate the principles of Articles 5 and 6 of the PLT. The amended section applies to applications initiated on or after 1 January 2005 by the filing of documents which comply with the requirements of s.15(1). The relevant rules were amended with effect from this date by the Patents (Amendment) Rules 2004 (S.I. 2004 No. 3205). For applications initiated by documents that met the relevant requirements of the former section 15(1) on or before 31 December 2004, unamended sections 14(1) 15, 17 and 18 of the Act and the Rules continue to apply. The Patents Rules 2007 (SI 2007 No. 3291) have replaced the Patents Rules 1995 (as amended) with effect from17 December 2007.

Section 15(1)
Subject to the following provisions of this Act, the date of filing an application for a patent shall be taken to be the earliest date on which documents filed at the Patent Office to initiate the application satisfy the following conditions-
(a) the documents indicate that a patent is sought;
(b) the documents identify the person applying for a patent or contain information sufficient to enable that person to be contacted by the Patent Office; and
(c) the documents contain either (i) something which is or appears to be a description of the invention for which a patent is sought; or (ii) a reference, complying with the relevant requirements of rules, to an earlier relevant application made by the applicant or a predecessor in title of his.
Section 15(2)
It is immaterial for the purposes of subsection (1)(c)(i) above-
(a) whether the thing is in, or is accompanied by a translation into, a language accepted by the Patent Office in accordance with rules;
(b) whether the thing otherwise complies with the other provisions of this Act and with any relevant rules.

15.02

r.12(1), r.25(1)(a) is also relevant.

Normally the indication that a patent is sought will be given by the completion of Patents Form 1. This is designated a formal requirement, but it is not necessary that it be explicit in order for a date of filing to be accorded. If the documents filed contain an implicit indication, however informal, which makes it reasonably clear that an attempt is being made to file an application for a patent then s.15(1)(a) can be regarded as having been complied with. The indication must, however, be in English or Welsh (at least to the extent that it is apparent to a literate person acquainted only with the English and/or Welsh language that a patent is sought).

15.03

The applicant is sufficiently identified if the name and address given are adequate to meet the customary requirements of postal delivery. The address may be anywhere in the world. Other information (such as a phone number) instead of an address may be sufficient identification to grant a filing date see 15.03.1. Where there is more than one applicant each must be adequately identified.

15.03.1

r.12(2), r.12(3) is also relevant.

The applicants name and address should normally be given at the time of filing,but failing that a date of filing can be accorded when the application contains sufficient information to enable the applicant to be contacted. Where an application which does not include both the applicants name and address is accorded a date of filing, the applicant must be notified of the failure, and the comptroller may refuse the application if the applicant does not file the missing information within two months of issue of the notification. The name and address (or other means of contacting the applicant) must be in English or Welsh to the extent that it is useable by a literate person acquainted only with the English and/or Welsh language.

[ Where Parts 2 and 4 of Form 1 do not, between them contain enough information to enable the applicant to be contacted, contact information in Part 12 may be good enough, but where there is doubt the advice of Legal Section should be sought.]

15.04

s.7(1) is also relevant.

If the application is made in the name of a firm or other organisation which is not a corporate body this will not prevent it being accorded a filing date, provided the organisation is adequately identified. The formalities examiner should however require that one or more persons (that is, individuals or corporate bodies) be named at part 2 of Form 1.

15.05

Provided a document contains at least a small amount of technical information it will be regarded as complying with s.15(1)(c), and failure to comply with, for example, s.14(3) or r.14 will not prevent a filing date being accorded. If the description fails to comply with any formal or substantive requirement of the Act or Rules, objection will be raised sooner or later and the applicant given an opportunity to rectify the matter. It is therefore in the interest of the applicant to ensure that, at the time of filing, the description is not flawed in such a way that rectification would not be possible. For example, no amendment is allowed which would result in the description disclosing matter not either present at or referred to on the filing date.

[ In the rare event that although a filing date has been accorded, it transpires that what has been filed cannot conceivably be called a description, the filing date should be cancelled. ]

15.06

There is no requirement to pay a filing fee as a prerequisite to an application being accorded a date of filing. For details of payment of the application fee required for preliminary examination, see 14.02 and 14.04.17.

Disclosure

1. Description, Language of Description

15.06.1

In order to qualify for a date of filing something that is or appears to be a description will normally be required. Providing that the remainder of the application is in English or Welsh (i.e. with names and addresses etc. intelligible to and useable by a literate person acquainted only with English and/or Welsh) an application can qualify for a date of filing if the description (or what appears to be the description) is neither in English or Welsh nor compliant with rules such as r.14. The wording something that appears to be a description in s 15(1)(c)(i) reflects the wording a part which, on the face of it, appears to be a description of the PLT, and caters for possibility of that part of the application being in non-Roman notation.

15.06.2

r.12(8), r.12(9) is also relevant.

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.

2. Reference to an earlier application

15.06.3

r.17(1) is also relevant.

Article 5(7) of the PLT requires Contracting Parties to accept, for the purposes of according a date of filing only, a reference to an earlier application as a replacement for the description, and this is reflected in s.15(1)(c)(ii). Where such a reference is made the application number, date of filing and country of filing must be stated in part 9 of Form 1.

15.06.4

s.15(10)(b), r.17(2), r.22(3), r.108(1), r.108(5)(7), r.17(3), r.112(1), r.112(2) is also relevant.

The application will be treated as withdrawn if the disclosure contained in the reference fails to be substantiated by the filing of a certified copy of the earlier application (and, if that copy is not in English or Welsh, by an accompanying translation) within the four months (extendable at the discretion of the comptroller, see 123.34 to 123.41. Applicants must bear in mind any difficulties which may be inherent in obtaining the necessary certified copies and translations within the time allowed. Where, however, a copy of the earlier application in question is available to the comptroller, the comptroller will make and certify the necessary copy and place it on the file without the applicant needing to request or pay for it.

15.06.5

r.22(1), r.108(2)-(7) is also relevant.

The application will also be treated as withdrawn if a description (in English or Welsh) is not filed (as required by s.15(10)(b)(i)) before the expiry of the period prescribed in r.22(1). This period is extendable once by two months as of

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