1 Basis for conversion

Deemed withdrawal pursuant to Art. 77(5) EPC

Sect. 81(1)(b) PA

2 Procedural steps to be taken

(a) Request for conversion only if the UK Patent Office is the receiving Office

(b) Fee of GBP 130 for preliminary examination and search (Form 9/77);

(c) Statement of inventorship and of right to grant (Form 7/77 - no fee)

(d) Where necessary an English translation

Sect. 81(2) PA

R. 81, 82 PR

Schedule PFR

3 Time limit for taking procedural steps referred to in column 2

If the UK Patent Office is the receiving Office:

(a) 3 months from date of notification to the applicant by the EPO that the application is deemed to be withdrawn

(b) and (c) 2 months from receipt of the request for conversion, extendible by one month (R. 110(3)) or possibly longer on request under R. 110(4) and, if request is allowed, R. 110(6).

If the UK Patent Office is not the receiving Office:

(b) to (d) 4 months from the date of a communication from the UK Patent Office notifying receipt of a request for conversion, extendible by one month under R. 110(3) or possibly longer under R. 110(4) and, if request is allowed, R. 110(6)

R. 81(1), (3), (4), 82(3), (4), 110(3), 110(4), 110(6) PR

4 Must a national professional representative be appointed?

The procedural steps referred to in column 2 may be taken by the applicant or any representative appointed by the applicant. An address within the UK must be provided, to which all correspondence will be sent.

Authorisation will not normally be required except where there is a change of national representative after the proceedings before the UK Patent Office have begun or where a representative is appointed after the applicant has started proceedings himself, in which case Form 51/77 (no fee) is required. The form must be in duplicate if one representative is appointed for another.

R. 30, 90 PR

5 Special features

The other information required for a normal domestic filing (Form 1/77) should also be supplied (eg title, priority data), but no fee will be necessary.

re column 3:

For an extension under R. 110(3), Form 52/77 (fee GBP 135) must be filed; for a request under R. 110(4), Form 52/77 (fee GBP 135) accompanied by a statutory declaration or affidavit verifying the grounds for the request must be filed, followed by the filing of Form 53/77 (fee GBP 135) if the request is allowed.

R. 16(1), 110(3), 110(4), 110(6) PR

Schedule PFR