VII. Conversion of European patent applications or patents into national patent applications

Deemed withdrawal pursuant to Art. 77(3) EPC

Sect. 81(1) PA

(a) Request for con­version, accompanied by copy of notification by EPO that the application is deemed to be withdrawn (only if the IPO is the receiving Office; otherwise request will be filed by the receiving office);

(b) Application fee of GBP 90 (GBP 60 if filed electronically), if paid at the time of filing the request for conversion (a 25% surcharge will be added if it is paid later); and search fee (Form 9A) of GBP 180 (GBP 150 if filed electronically) plus GBP 20 for each claim over 25;

(c) Statement of inven­torship and of right to grant (Form 7 – no fee)

(d) Where necessary an English translation

Sect. 81(2) PA
R. 58, 59 PR
R. 3(1)(b), 3A, 3B, Schedule 1 PFR

If the IPO 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(a) 3 months from date of notification to the applicant by the EPO that the application is deemed to be withdrawn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 2 months (R. 108(2)) or possibly longer on request under R. 108(3). Any exten­sions or further exten­sions may only be for periods of 2 months (R. 108(5)) and cannot be granted more than 2 months after the originally pre­scribed or previously extended period has expired (R. 108(7)).

If the IPO is not the receiving Office:

(a) 20 months from the date of filing of the application or the declared priority date

(b) to (d) 4 months from the date of a communi­cation from the IPO notifying receipt of a request for conversion, extendible by 2 months under R. 108(2) or possibly longer under R. 108(3). Any exten­sions or further exten­sions may only be for periods of 2 months (R. 108(5)) and cannot be granted more than 2 months after the originally prescribed or previously extended period has expired (R. 108(7)).

R. 58(1), (3), (4), 59(1), (3), 108(2), (3), (5), (7) PR

The procedural steps referred to in section 2 may be taken by the appli­cant or any repre­sentative appointed by the applicant.

Authorisation will not normally be required except where there is a change of natio­nal repre­sentative after the pro­ceed­ings before the IPO have begun or where a repre­sen­tative is appointed after the applicant has started proceed­ings himself, in which case Form 51 (no fee) is required.

R. 101, 103 PR

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

re section 3:

For an extension under R. 108(2), Form 52 (fee GBP 135) must be filed; for a request under R. 108(3), Form 52 (fee GBP 135) accompanied by evidence supporting the grounds for the request must be filed.

R. 12(1), 108(2), (3), (5), (7) PR
Schedule 1 PFR