Statutory guidance

Directions under section 31A of the Registered Designs Act 1949, section 123(2A) of the Patents Act 1977 and section 66 of the Trade Marks Act 1994

Published 30 September 2020

Changes to Designs, Patents and Trade Marks Forms by addition of a payment Sheet to fee bearing forms

1. The comptroller has made these Directions under section 31A of the Registered Designs Act 1949, section 123(2A) of the Patents Act 1977 and section 66 of the Trade Marks Act 1994.

2. These Directions set out changes to the below Designs Forms, Patents Forms and Trade Marks Forms whose use is required by rules.

3. These Directions come into force 1 October 2020.

4. The following forms are set out in the Schedule to these Directions and are the forms which are required by the Registered Designs Rules 2006 (SI 2006/1975) as amended, the Patents Rules 2007(SI 2007/3291), as amended and the Trade Marks Rules 2008 (SI 2008/1797) as amended:

• Trade Marks Form 3 (Application to register a trade mark)
• Trade Marks Form 3A (Application to add extra classes)
• Trade Marks Form 5 (Request for a statement of reasons for registrar’s decision)
• Trade Marks Form 7 (Notice of opposition and statement of grounds)
• Trade Marks Form 7F (Notice of FAST TRACK opposition and statement of grounds)
• Trade Marks Form 7G (Request to add grounds to a notice of opposition)
• Trade Marks Form 11 (Renewal of trade mark registration)
• Trade Marks Form 12 (Request to divide an application)
• Trade Marks Form 13 (Request to restore and renew a registration)
• Trade Marks Form 16 (Application to record a change of ownership)
• Trade Marks Form 16P (Application to record a partial assignment of goods and/or services)
• Trade Marks Form 24 (Application to record or amend a security interest
• Trade Marks Form 24C (Application to cancel a security interest)
• Trade Marks Form 26(I) (Application to declare invalid a registration or a protected international trade mark (UK))
• Trade Marks Form 26(N) (Application to revoke a registration or a protected international trade mark (UK) for reasons of non-use)
• Trade Marks Form 26(O) (Application to revoke a registration or a protected international trade mark (UK) for reasons other than non-use)
• Trade Marks Form 31C (Request for information about events relating to a UK trade mark)
• Trade Marks Form 31M (Request for information about events relating to an International Registration covering the UK)
• Trade Marks Form 31R (Request for a Certified Copy)
• Trade Marks Form 35 (Regulations governing the use of certification or collective marks)
• Trade Marks Form 36 (Application to amend the regulations governing the use of certification or collective marks)
• Trade Marks Form 50 (Application to record a licensee)
• Trade Marks Form 51 (Application to remove or amend the recordal of a licence)

• Trade Marks Form 55P (Notice of appeal to the Appointed Person)
  
  

• Patents Form AF1 (Application Fee for patent application)
• Patents Form 1 (Request for grant of a patent)
• Patents Form 2 (Initiation of proceedings before the Comptroller)
• Patents Form 3 (Late Additions and Declarations of Priority)
• Patents Form 4 (Continuation of proceedings before the Comptroller)
• Patents Form 9A (Request for search)
• Patents Form 10 (Request for a substantive exam)
• Patents Form 12 (Payment of renewal fee (and additional fee for late payment))
• Patents Form 15 (Notice of opposition)
• Patents Form 17 (Request for opinion as to validity or infringement)
• Patents Form 21 (Application to record a change of ownership or give notice of rights acquired in a patent or patent application)
• Patents Form 23 (Request for a certificate of the Comptroller or a certified or uncertified copy from a file or the register)
• Patents Form 34 (Grant fee for patent application)
• Patents Form 49 (Request to be informed of future events relating to a Patent application or patent (caveat))
• Patents Form NP1 (National processing of an international application for a patent (UK))
• Patents Form SP1 (Application for grant of a Supplementary Protection Certificate)
• Patents Form SP2 (Payment of annual fees (and additional fee for late payment))
• Patents Form SP3 (Application for declaration of lapse or invalidity, or to revoke an extension of the duration of a supplementary protection certificate)

• Patents Form SP4 (Application for grant of an extension to a Supplementary Protection Certificate)
  
  

• Designs Form 2A (Application to register one or more designs)
• Designs Form 2B (Application to register one or more designs divided from an earlier application)
• Designs Form 2C (Application to register one or more deferred designs)
• Designs Form 9A (Renewal of design registration)
• Designs Form 19A (Request to invalidate a design registration)
• Designs Form 21 (Request for a search of the UK designs register)
• Designs Form 23 (Request for a Certified Copy)
• Designs Right Form 1 (Reference of dispute to Comptroller)
• Designs Right Form 2 (Application to be made a party to proceedings)
• Designs Right Form 3 (Application to settle terms of Licence of Right or to adjust terms of Licence granted before 1 August 1989)
• Designs Right Form 4 (Application by Design Right or Copyright owner to vary terms of licence of right)

5. Patent Form 9A as so set out replace the corresponding Form in the Schedule to the Directions made on 5 March 2020 (which came into force on 8 March 2020). The Directions made on 5 March 2020 are, to that extent, revoked.

6. The remaining Patents Forms, as so set out, replace the corresponding Forms in the Schedule to the Directions made on 15 May 2018 (which came into force on 25 May 2018). The Directions made on 15 May 2018 are, to that extent, revoked.

7. Designs Form DF9A and Trade Marks Forms TM11 and TM13 as so set out, replace the corresponding Forms in the Schedule to the Directions made on 28 July 2020 (which came into force on 30 July 2020). The Directions made on 28 July 2020 are, to that extent, revoked.

8. Designs Forms DF2B and DF19A as so set out, replace the corresponding Forms in the Schedule to the Directions made on 23 May 2018 (which came into force on 13 June 2018). The Directions made on 23 May 2018 are, to that extent, revoked.

9. Designs Forms DF2A as so set out, replaces the corresponding Form in the Schedule to the Directions made on 19 December 2017 (which came into force on 19 December 2017) the Directions made on 19 December 2017 are, to that extent, revoked.

10. Trade Marks Forms TM3, TM7, TM7F and TM26(I) as so set out, replace the corresponding Forms in the Schedule to the Directions made on 13 February 2019 (which came into force on 14 February 2019). The Directions made on 13 February 2019 are, to that extent, revoked.

Simon Haikney
Divisional Director Business Operations
Acting on behalf of the Comptroller
24 September 2020