Chapter 2: Request for grant of a patent (Form 1)
Section (2.01 - 2.70) last updated: March 2017.
S.14 of the Patents Act 1977 sets out how an application for a patent should be made. S.15A(2) provides that the Formalities Examiner shall determine whether the application complies with those requirements of the Act and Rules which are designated by the rules as formal for the purposes of the Act. The formal requirements are set out in r.25 and include the requirement in r.12(1) which states that: “A request for a grant of a patent shall be made on Patents Form 1”. Although it is not necessary to submit F1 with the application for a filing date to be accorded, it will be necessary if the application is to proceed.
The Patents Form 1 comprises twelve parts:
- part 1 - Your reference
- part 2 - Applicant(s) name(s), address and ADP No
- part 3 - Title of invention
- part 4 - Name of agent, address for service and ADP No
- part 5 - Priority declaration
- part 6 - Divisional
- part 7 - Inventorship
- part 8 - Application fee
- part 9 and 10 - Itemised lists of accompanying documents including any reference to an earlier application
- part 11 - Signature and date
- part 12 - Contact point for the applicant
Part 1 - Reference number
Part 1 of the Patents Form 1 provides an opportunity for the applicant or agent to provide a reference number for the application. Although there is no obligation to provide such a reference it is in the applicant’s interest to do so.Until the application is allocated an application number there is no other reliable way of identifying a particular application.
When a reference is provided it must be used on all official correspondence relating to the application. If the agent uses a new reference number on subsequent correspondence this should be used on official letters. The Formalities Examiner should consult with the Patent Examiner to affect this change on Prose. this is the only way this can be changed permanently.
Part 2 – Applicant(s) name(s), address and ADP number
S.15(1)(b) requires that the documents forming an application must identify the person applying for the patent, or alternatively contain enough information to allow that person to be contacted. If this information is not provided the application will not receive a filing date and the documents will be retained by Document Reception until such time as a filing date can be awarded. Acceptable means of contact include: -
the name and address of the applicant in part 2 of the Patents Form 1
the name and address or other contact details for an agent or an address for service in part 4 of the Patents Form 1
an e-mail address, telephone number or fax number of a contact point for the applicant recorded in part 12 of Patents Form 1
Rules 12(2) and (3) further require that if the applicant’s name and address are not supplied at filing that they must be provided within 2 months of the date of notification. Failure to provide these details may lead to the application being refused.
When an application is filed without the applicant, agent or AFS name and address details but a contact phone number, e-mail address or other contact point is provided then Document Reception will attempt to contact the applicant in order to issue the receipt. If this is not possible Document Reception will minute the dossier and forward it on in the usual way but with the filing receipt retained. Index and Scanning will also note that the name and address details are absent and will minute this prominently on the dossier which will then be assigned to the relevant Formalities group who will then attempt to make contact with the applicant so as to issue the filing receipt and any other correspondence.
Where the applicant’s name and address are not supplied but there is an agent appointed or an address for service provided then the case will be processed in the normal way and assigned to Formalities who will action it as follows :-
a) Where an Application Fee has been paid the name and address details should be requested in the Preliminary Examination Report which will be sent to the agent or address for service provided. The applicant should be requested to supply his/her name and address in writing within a period of two months. The case should then be diarised for 4 months to await a response.
b) Where an Application Fee has not been paid, name and address details should be requested as soon as possible using the letter at Annex 2A - Request for further details to the agent or address for service. The applicant should be requested to supply his/her name and address in writing within the two month period allowed. The case should then be diarised for 4 months to await a response.
When the name and address details are provided a PDAX message should be sent to I & S Queries for the creation of an ADP number if there is not already one in existence. An appropriate minute should be placed on file. Index and scanning will reply to Formalities and the Formalities Examiner should then add the applicant’s name and address details using COPS function REC ADD. The Patents Form 1 should be annotated using the enhancer.
Formalities should then perform the Preliminary Examination if an Application Fee has been paid and it has not already been completed.
The time period for supplying the applicant’s name and address is two months from notification. This may be extended under rule 108(1) but subject to the restrictions of rule 108(5) and (7). See 10.20-22 and 10.43-44. query.
If more than 4 months have elapsed a late response may exceptionally be allowed if the reasons show that the applicant’s failure to respond was unintentional.
Where the name and address details for the applicant have been requested as per 2.07 above but no response is received the application should be referred to the Formalities Manager to consider refusal under rule 12(3). A suitably amended FL48 letter may be issued, see 2.69-2.70 below.
Checking the applicants details
S.7 of the Act states that “Any person may make an application for a patent either alone or jointly with another”. In this case, “person” means either an individual or a corporate body but not an unincorporated body. A list of recognised corporate bodies and the type of firms that may apply for a patent in their own name is given in Annex 2B - List of recognised corporate bodies. In addition to the type of firms listed in the Annex consideration should be given to other foreign firms if it is affirmed by the applicant or agent that, under the law of the foreign state in question, such firms can acquire title to property in their own name. Such cases should be referred to the Head of Administration for consideration and advice.
A partnership is normally unincorporated. However, a Scottish partnership firm is also regarded as a corporate body, though the name of the partnership, entered in this part of the form and any continuation sheet, should be followed by the names of the personally responsible partners. A limited liability partnership is also a corporate body and can hold property in its own right; it may therefore correctly be described as ‘incorporated in the UK’.
Applications may also proceed in the name of a limited partnership organised under the laws of the following US states:
- New York
If an applicant/agent claims that an application by a limited partnership organised in a US state other than one named above should proceed then the matter should be minuted and referred to Legal Section for advice.
In Canada limited partnerships may be incorporated either federally in Canada or provincially. If incorporated provincially, the name of the province (for example Quebec, Ontario) should be given as the state of incorporation.
Where the applicant is a partnership (other than a Scottish partnership, a limited liability partnership or a limited partnership organised in the above mentioned US states or Canada) the applicant/agent should be advised that for the application to proceed the name of the partnership will need to be replaced by the names of the individual partners as joint applicants. If, however, the applicant/agent claims that a partnership organised in a state other than one of those listed in 2.12 above should be allowed, the dossier should be minuted and referred to Legal Section.
The Act prohibits the Comptroller from registering any applicant not capable of owning intellectual property. In general, this ruling applies to applications filed in the name of a “Trust” (s.32(3)). If an application is filed in the name of a Trust, Index and Scanning section will issue a letter (Annex 2C - Letter to request name/address details) to the applicant in order to establish that it is capable of holding intellectual property in its own right. NHS Hospital Trusts are corporate bodies and applications from them should not be queried.
If the Trust is not capable of holding intellectual property, the names of not more than four trustees empowered to hold property on behalf of the Trust must be provided. The register will then be amended so that the application proceeds in the name of the nominated trustee(s).
If an application in the name of a Trust is received in Formalities and no letter has been issued the case should be minuted and referred to the manager of the Index and Scanning Unit.
The requirement to provide the country and state of incorporation has been removed. The Patents Form 1 no longer requests this information and no objection should be raised if this information is not provided.
Trading styles, for example “Trading as XYZ Company”, are not required and should not be given. Such information will not be recorded onto COPS and will therefore not appear on either the “A” or “B” prints or in the Register. The Formalities Examiner should advise the applicant / agent accordingly.
If the application is made on behalf of a Government department, the applicant should be stated as the Secretary of State or Minister responsible for the department, and not the individual holding such office.
Where the applicant is an individual the full name should be given in this part of the form. Any additional individual applicants should also be identified in this part of the form and on continuation sheets where appropriate.
The individual’s true name should be given though exceptionally a pseudonym may be used if it is well established and is customarily used by the individual for banking and other purposes. The name must be given in full with the surname or family name underlined. See 12.55 to 12.57 for dealing with situations where the applicant may have died. An application may be made by a person aged under18 or alternatively by his/her parent or guardian.
In all cases the applicant’s address should be given in full. This address must be permanent i.e. an address which the office can rely on to communicate with the applicant at all times. When the application is published the applicant’s name and address will appear on our website which can be permanently searched using most standard search engines.
This has caused difficulties for some applicants who may not want their home address published; therefore a different address where they can be contacted, such as a business address or a PO Box address may be supplied. A warning to this effect is included on the Patents Form 1.
A business address is acceptable, a c/o address may be acceptable if the applicant can show that it is acceptable as a permanent address, for example if it is registered with Companies House as the company’s address. Where a c/o address is given, the Formalities Examiner should contact the applicant/agent and ask for evidence (for example from Companies House if a company or in the form of a utility bill or similar in the case of an individual) that the address is a permanent address which the office can depend upon to communicate with the applicant at any given time. It is in the applicant’s best interests to provide the Office with a secure and reliable address.
Since the United Kingdom does not accord diplomatic recognition to Taiwan, the statement “Republic of China” for the address of an applicant located in Taiwan cannot be accepted and should be objected to. A free text entry should be added to the Preliminary Examination report to the effect that Republic of China will be deleted from the Patents Form 1 and will not be referred to in any of our records. The Form 1 should be enhanced to this effect and the Optics record checked to ensure it does not refer to “Taiwan, Republic of China” If the applicant disagrees, he should be advised in response that the onus is on him to ascertain from the Foreign Office what is considered to be an acceptable designation.
Alterations to applicant’s name
Under rule 49 all requests to change a name must be made on Form 20 (This includes corrections to details incorrect at the time of filing and changes made after filing by marriage, deed poll, changes of company name etc. and also corrections under s.117). All Form 20s will be directed to Register Admin section in the first instance who will forward any s.117 corrections to Formalities to deal with using the message Form 20 correction.
Correction of applicant’s name
If the name entered at part 2 of the Patents Form 1 was incorrect at the time of filing, then a request to correct it to the name that should have been entered should be made on Form 20. If a request to correct a name is received other than on a Form 20 a form should be made up in the office and the applicant/agent should then be advised that any future requests should be made using Form 20.
Evidence should not be requested as a matter of course but only where a doubt exists as to the accuracy or veracity of the information provided. If there is such a doubt then the applicant must be informed what the doubt is.
All such requests should be referred to the Assistant Head of Administration for processing. The request should be treated as a request to correct an error in accordance with r.49. If the request is received after grant it should be dealt with by Litigation Section.
Assignment of application to another legal entity
If the name of the applicant entered in part 2 of the Patents Form 1 was correct at the time of filing but the application has since been assigned (sold, transferred) to another legal entity then the request should be filed using a Form 21 and forwarded to Register Admin Section for further action.
Amendment of applicant’s name
If the name entered in part 2 of the Patents Form 1 was correct at the time of filing but there has since been a change to the applicant’s name (for example by marriage, change of company name) but not a change in ownership then a Form 20 should be filed and forwarded to Register Admin Section for further action.
Change of applicant’s address
If the address of the applicant has been changed then a request to register the change should be made in writing. There is no need to file a form 20 an email will suffice. The request should then be dealt with in accordance with r.49(3). However, if the request relates to two or more applications the request should be forwarded to Register Admin Section for further action.
When such notification is received the Formalities Examiner should amend or correct COPS as appropriate using REG NAM. There is no need to update the Patents Form 1 as COPS will contain the correct details. The Form 1 is only annotated in the TOC “applicants address updated”.
If mail sent to an applicant is returned to the Office by the Royal Mail marked as ‘Gone Away’ or ‘Not at this Address’ etc. it may be that the applicant has failed to notify the Office of a change of address. The Formalities Examiner should check the dossier for any unactioned notifications and, if there are none, check any other forms and documents for the applicant’s contact details. A telephone number or e-mail address may be used to make contact with the applicant and establish if their address has changed. The outcome of any attempts made to contact the applicant should be recorded in a minute.
When the Office becomes aware that an applicant has died, the Formalities Examiner should annotate the Patents Form 1 “deceased” using the enhancer. A register entry should also be inserted below the line to record the fact that the applicant has died. If the rights in the application are subsequently transferred in a will to another legal entity Register Admin Section will register the transfer in due course upon receipt of a Form 21.
If, however, the Office is given notice of the appointment of a “personal representative” who effectively acts as the executor or administrator of the deceased applicant’s estate then, provided a probate or Letter of Administration is supplied to confirm the standing of the personal representative, the appointment can be recorded on the register as a below the line entry. The application can then proceed in the name of the personal representative until such time as the application is vested by assent to another legal entity.
If a personal representative has not been appointed by the time the application is in order for grant the patent should be granted in the name of the deceased. However, if by that time a personal representative has been appointed but the rights in the application have not been vested by assent to another legal entity, the patent should be granted in the name of the personal representative.
Part 3 - Title of invention
The title of the invention must be given at this part of the form. It is this title that is entered in the register (COPS) and in the list of new applications advertised in the on-line Patents Journal. The applicant should therefore not disclose any details which may undermine the invention in the title. If an applicant is concerned that they may have done so then an amendment may be allowed if requested in time prior to publication in the journal.
The title should be consistent with that given on the first page of the description. Where it is not, the Patent Examiner should be advised of the discrepancy by a minute. Where no title has been given to the description no action is necessary other than advising the Patent Examiner of its omission in a minute (see Chapter 4). A request to correct the title on Patents Form 1 should be forwarded to the Patent Examiner, if it is allowed the new title should be added to the Form 1 using the enhancer. COPS should also be updated and a Printer’s Instruction added using REC FOO (option 6 for correction).
Where there is no title given on the Patents Form 1 but there is a title present in the description the Formalities Examiner should carry out the following actions:
a) Contact the agent/applicant, if possible by telephone, and confirm that the title present in the description should be used on the Patents Form 1 (if they do not wish to use that title see 2.37 above).
b) Insert the title in part 1 of Patents Form 1 using the enhancer.
c) If telephone contact was made, prepare and issue a confirmatory telephone report sheet and import a copy into the Dossier (only possible if ‘ADD F1’ has been done, do a free text letter if it’s pre F9) and record the appropriate minute.
If a title is more than 158 characters in length it will not fit into the field on COPS. Index and Scanning will insert as much of the title as possible. If this occurs the Formalities Examiner should use COPS function REG ENT and select Option 18 truncated title in order to enter the full title below the line following the words:
“The application/grant title has been truncated by the Office. See below for full title.”
Where there is no title given on either the Patents Form 1 or in the description, or the agent/applicant did not wish to use the title supplied in the description or if the title on the Form 1 is in a foreign language the Formalities Examiner should carry out the following actions:
a) Contact the agent/applicant, if possible by telephone, and request that they provide a title if there is none, or a title in English if the title is in a foreign language. Set a reply period of fifteen months calculated from the earliest declared priority date, or where there is no claim to priority, the filing date of the application.
b) If telephone contact was made prepare and issue a confirmatory telephone report sheet and import a copy of the report into the dossier (only possible if ‘ADD F1’ has been done, do a free text letter if it’s pre F9).
c) Set a suitable diary date (making allowance for the Patent Examiner’s search and the automatic and retrospective two month extension) to monitor the case and record the appropriate minute.
Part 4 - Name of agent, address for service and ADP No
If an agent has been appointed in this part of the form and the applicant contacts the Office directly he must be advised to communicate with the Office via his agent. If however the applicant contacts the Office after dispensing with the services of his agent he should be advised to notify the Office of the change in writing. An email will suffice.
If an agent’s name has changed but there has not been a change in legal entity then a request to register the new name should be made on Form 20 and forwarded to Register Admin Section for further action.
Where an applicant changes his agent or appoints an agent for the first time a Form 51 or letter should be filed by the incoming agent. If it is discovered that a change has occurred without a notification being filed the incoming agent must be asked to file a F51 within two weeks. On receipt of the form the Formalities Examiner should enter the new agent’s name and address in part 4 of the Patents Form 1, together with the ADP number if one is supplied, using the enhancer. If a Form 9A has been filed COPS should be updated. A standard letter is issued with the copy of the F51 that is sent to the outgoing agent informing them that they are no longer acting in respect to the application and giving them an opportunity to dispute the new authorisation.
It is for the applicant(s) to authorise appointment of an agent. If the outgoing agent responds disputing the authorisation of the new agent the Formalities Examiner should reverse the change of agent and contact the new agent, advising them of the situation and requesting confirmation of their appointment from the applicant.
If we are informed by an agent/AFS that they are no longer acting on an application and we have not been informed of a new AFS it is usual to inform the applicant of this by issuing an amended version of the COA F51 letter telling them that we will use their address as the AFS unless they inform us otherwise and enclosing a copy of the letter /form from the outgoing agent. If there is more than one applicant then we should issue this letter to both or all applicants, informing them that we will use the first named applicant (inserting the name of that applicant) as AFS unless they inform us otherwise, giving 2 weeks for response and setting a suitable diary entry. They should preferably file a Form 51, which we should then copy to the other applicant(s) unless it is clearly signed by all applicants.
COPS should be updated using REG NAM option 12 to record the first named applicant as address for service until we are informed otherwise.
If an applicant informs us that he has dispensed with the services of his agent the same procedure will apply provided it is clear that the agent has been dismissed.
If a Form 51 is filed containing a schedule of applications to which a change of appointment relates the form should be forwarded to Register Admin for processing.
F51 may be filed to enable an agent to act on a specific procedure, for example a request for a certified office copy or an assignment action. In these circumstances there is no change of agent in respect to the application and so the Patents Form 1 should not be altered. However, no copies of any documents on any unpublished application may be issued to anyone who is not properly authorised to receive them. The incumbent agent should be informed, preferably by telephone, of any action requested by another agent so that they can object if necessary. The dossier should be noted accordingly.
Address for service
Every application must include an address for service, which must be in the European Economic Area (EEA), the Isle of Mann or the Channel Islands (r.103), in this part of the form. This address will be treated for all purposes as the address of the person making the application or concerned with the proceedings and all communications must be sent to the applicant at or c/o this address.
An address for service in the Channel Islands is not allowed for a patent agent unless they also reside or have a place of business in the United Kingdom, Isle of Mann or another member state of the European Union. (MoPP 14.04.13 and 281.04)
At 12 April 2014 the European Economic Area consists of:
- these countries are in the EEA but are not members of the EC
- includes both Turkish and Greek administered areas
Switzerland is not a member of the EEA and a Swiss address cannot therefore be accepted as an address for service.
Where the address for service is not in the EEA or the Channel Islands a suitable paragraph requesting compliance with r.103 within 2 months should be added to the first official letter issued.
The letter should also explain that this is a legal requirement under r.103 to avoid giving the impression that we are simply being unhelpful. Any applicant who states they cannot readily supply an acceptable address for service should be advised to consider any relative or friend in the EEA or Channel Islands, or alternatively to contact C.I.P.A. for advice at:
The Chartered Institute of Patent Attorneys
95 Chancery Lane
tel: 020 7405 9450
fax: 020 7430 0471
If no response is received within 2 months to the formal direction issued under rule 103 in the preliminary examination report, the case should be referred to the formalities manager for termination as the application is deemed withdrawn under r.104(4)(a).
If the office receives correspondence directly from an applicant who has appointed an address for service we should respond to the applicant and copy the reply to the AFS. The applicant should also be reminded that all future correspondence relating to the application should be sent through the AFS.
If an address for service is changed before a F9A is filed a request to register the change should be filed in writing and should be dealt with in accordance with r.103(3). The new address must be entered using the enhancer.
Where the change of address for service is received after a F9A is filed then, in addition to the above procedure, the necessary COPS action should be taken and a suitable entry should be made on a minute (see 2.46).
Private Applicant cases
If a Private Applicant case is filed where there are two or more named applicants at part 2 of the Patents Form 1 and no Address for Service has been provided at part 4 of the Patents Form 1 the Formalities Examiner should address any correspondence to the first named applicant. In these circumstances both applicants must sign the form and any subsequent instructions. Where there are two or more Private Applicants named at part 2 of the Patents Form 1 and the name of one of the applicants has been entered as the Address for Service at part 4, then that named person may act on behalf of all the applicants. This may include the signing at part 11 of the Patents Form 1 and the signing of any subsequent letters including any withdrawal letter.
The ADP number is the “automatic data processing” number assigned by the Office to individual agents. The number should have been entered in this part of the form by the agent or by Index and Scanning Section, if this hasn’t been done contact Index and Scanning via the I & S Queries mailbox on PDAX.
Part 5 - Priority declaration
This part of the form should be completed if the applicant wishes to claim priority from an earlier application under s.5 of the Act.
If the applicant wishes to claim priority from an earlier application he should normally do so at the time of filing and the country and date of filing of the earlier application should be entered in this section. However, a late claim to priority may be made up to 16 months after the earliest date by filing a Form 3 – see Chapter 6 for full details.
The file number of the earlier application should be given at filing if known but may be provided within 16 months of the earliest declared priority date.
If the priority date claimed is more than 12 months old then rule 24 may apply. Alternatively a request may have been filed for permission to make a late declaration using Form 3 or in writing on a Divisional application. See Chapter 6 for full details.
If no Form 3 or written request relating to a late declaration of priority is present then the applicant must be notified that the declared priority date is invalid. A period of 2 months is allowed for a corrected valid date to be provided otherwise the priority claim will be disregarded.
Part 6 - Divisionals
This part of Form 1 should be completed when the applicant wishes to claim an earlier date under s.15(9), s.8(3), s.12(6) or s.37(4). As well as indicating under which section the claim is made, the number of the earlier application and its filing date must be given. In the case of a claim under s.15(9) (a Divisional application) the claim must be made at the time of filing the application. See Chapter 14 for full details.
Part 7 - Inventorship
The Form 1 states that inventors must be individuals not companies. If any of the applicants given in part 2 of the form are corporate bodies a Form 7 is required.
There are two questions in part 7 of the Patents Form 1. The first asks “Are all the applicants named above also inventors?” If the answer to this question is no a F7 is required. If the answer is yes a F7 may still be required. The second question asks “ If yes, are there any other inventors?”. If the answer to this question is yes a F7 will be required.
Where all the applicants in part 2 are individuals and not corporate bodies and the two questions in part 7 of the Form 1 have been answered YES and NO in that order then a Form 7 will not be required. In all other circumstances a F7 should be requested. Where a F7 is required this should be requested in the Preliminary Examination Report (see Chapter 7). If part 7 has not been completed the Formalities Examiner should include this in their preliminary examination report.
Part 8 - Application fee
The Application Fee may be filed when the application is filed. When this occurs the fee will be recorded in the top right corner of the Patents Form 1 by Finance Section. (If the application is e-filed and no fee is present on the form and the official receipt should be checked). The payment of the Application Fee will trigger the Preliminary Examination (see Chapter 7). All applications must be checked to see if the Application Fee has been paid.
Part 9 and 10 - Itemised Lists of Accompanying Documents (incl. any reference to an earlier application)
The checklist in this part of the form should be completed to indicate what comprised the application as filed. This information is checked by Document Reception. Some discrepancies may already have been raised with the agent/applicant by Document Reception staff. If so this should be noted on the dossier.
Part 11 - Signature and date
The request for the grant of a patent on Patents Form 1 must be signed in this part of the form. It must be signed by the applicant, or if there is more than one applicant, by each applicant, or by the authorised agent. Where the Patents Form 1 has not been signed as appropriate the Formalities Examiner should raise an objection (see Chapter 7). If the Patents Form 1 has been filed by fax the signature on the fax is acceptable. Where the application has been filed electronically the application may be signed with a facsimile signature (a representation of a real signature) a text string signature (for example /name surname/) or with an enhanced electronic signature.
Subject: An Other, An Agent, User Number Issuer: European Patent Office, European Patent Office CA.
All of these types of signatures are acceptable.
Part 12 - Contact point for the applicant
This part of the form allows the applicant to enter an e-mail address or telephone, mobile or fax number through which they can be contacted. In most applications this will just provide a useful contact point by which we can get in touch with the applicant or his/her agent. Where the name and address of the applicant is not given in part 2 of the Patents Form 1 any details given here may be the only way to contact the applicant until the name and address details have been provided. See 2.05 – 2.09 above.
Applications filed in a foreign language
A patent application may be filed in any language and still be accorded a filing date. However, if the description has been filed in a language other than English or Welsh the applicant must provide an English translation within two months (4.64 - 4.67).
These applications will be dealt with by Security section who will issue a letter and set a diary. Any application where part of the specification is not in English or Welsh should be referred to Security section for them to request a translation if this has not been done.
The filing of a properly completed and signed Patents Form 1 (r.12(1)) constitutes a formal requirement as defined by r.25.
S.15A(7) provides for the refusal of an application if a formal requirement has not been met. Where the only outstanding formal requirement relates to the Patents Form 1 and a request to meet that requirement has issued at least once, the Formalities Examiner should issue a suitably revised FL48 (see Annex 2D - FL48 letter). An amended FL48 letter should also issue when the name and address of the applicant have not been provided within 2 months of the date of notification (r.12(2) and (3)), see 2.09.