Practice Notice: Ceasing of Patents Form 10 Reminder letter
Published 24 June 2014
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This notice announces a change in Intellectual Property Office practice in relation to reminding applicants that Patents Form 10 (request for substantive examination) and the associated fee are due.
1. The change in practice
As of 1 July 2014 the Office will no longer issue reminder letters regarding the filing of Patents Form 10.
The letter which accompanies A-publication will continue to inform applicants of the deadline for filing Patents Form 10 to request substantive examination. As of 16 December 2013 this letter will also make clear that no further reminders will be issued regarding filing of the Form 10. Further details are provided below.
2. Background
Section 18(1) of the Patents Act 1977 and rule 28(1) and (2) of the Patents Rules 2007 set out that a request for substantive examination should be made by filing Patents Form 10 and the appropriate fee within 6 months of the date the application was published (“the prescribed period”). If the substantive examination request is not made within the prescribed period the application is treated as withdrawn at the end of the period. The letter which accompanies A-Publication informs applicants of this deadline (this information is also available on the Office’s website at ‘After you apply’, ‘Apply for substantive examination’, and also in the Office’s guidance booklets).
At present the Office identifies applications which are 2-3 weeks from the end of the prescribed period and issues a standard Form 10 reminder letter. This warns the applicant that the Office will treat the application as withdrawn if the Form 10 and fee are not filed in time.
3. Reasons for the change in practice
The Office issues up to 3000 Form 10 reminder letters per year. Since the letter serves only as a reminder of a deadline which has already been communicated to the applicant, the letter is considered to be unnecessary and will be discontinued. In addition, discontinuing the letter will remove the confusion which the reminder can cause for some of those applicants who had previously decided not to continue with their application.
4. What if the Form 10 deadline is missed?
Practice regarding extensions to the period for requesting substantive examination will not be altered by the removal of the reminder letter. It will remain possible to file a request for examination up to two months after the end of the prescribed period by filing a Patents Form 52 and fee to request an extension under rule 108(2).
However if the (extended) deadline for filing Form 10 is missed the application will be treated as withdrawn. No further correspondence from the office will be issued.
Where a failure to request substantive examination within the prescribed period was unintentional and that failure led to the application being treated as withdrawn, it will continue to be possible to reinstate the patent application under section 20A, where the necessary conditions are met.
5. Enquiries
Any enquiries about this notice should be made to
Sarah Whitehead
Patents Legal Section
Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom
01633 813751
Sean Dennehey Deputy Chief Executive Intellectual Property Office
13 December 2013