Statutory guidance

Guidance and notes on the changes to patents trade marks and designs forms made in relation to the end of the Transition Period

Published 22 December 2020

(a) These notes are not part of the Directions. They are intended to provide background and additional information.

(b) The Interpretation Act 1978 applies to these Directions. Therefore, all the definitions set out in the Registered Designs Act 1949 (as amended), Patents Act 1977 (as amended) and the Trade Marks Act 1994 (as amended) apply to these Directions. Further, amongst other things, generally any words importing the masculine gender include the feminine and words in the singular include the plural and words in the plural include the singular.

(c) Section 31A of the Registered Design Act, Section 123(2A) of the Patents Act and Section 66 of the Trade Marks Act allows the comptroller to give directions specifying any forms the use of which is required by the Designs Rules, the Patents Rules and the Trade Mark Rules.

(d) Patents Forms SP5, SP6, trade marks forms trade marks opt out, international trade marks opt out and designs forms designs opt out, international designs opt out have been introduced as set out below.

(e) The following design forms, patents forms and trade mark forms have been revised as set out below.

Patents Form 1, Patents Form 2, Patents Form 4, Patents Form 8, Patents Form 15, Patents Form 16, Patents Form 17, Patents Form 20, Patents Form 21, Patents Form 23, Patents Form 28, Patents Form 30, Patents Form 51, Patents Form 54, Patents Form NP1, Patents Form SP1, Patents Form SP3, Patents Form SP4, Designs Form DF2A, Designs Form DF2C, Designs Form DF5, Designs Form DF55, Trade Marks Form TM3, Trade Marks Form TM4, Trade Marks Form TM5, Trade Marks Form TM7, Trade Marks Form TM7F, Trade Marks Form TM8, Trade Marks Form TM8N, Trade Marks Form TM9, Trade Marks Form TM9C, Trade Marks Form TM9E, Trade Marks Form TM9R, Trade Marks Form TM9T, Trade Marks Form TM12, Trade Marks Form TM16, Trade Marks Form TM16P, Trade Marks Form TM17, Trade Marks Form TM21B, Trade Marks Form TM26(I), Trade Marks Form TM26(N), Trade Marks Form TM26(O), Trade Marks Form TM26R, Trade Marks Form TM27, Trade Marks Form TM28, Trade Marks Form TM29, Trade Marks Form TM33, Trade Marks Form TM33P, Trade Marks Form TM35, Trade Marks Form TM36, Trade Marks Form TM50, Trade Marks Form TM51, Trade Marks Form TM53, Trade Marks Form TM55 and Trade Marks Form TM55P

(f) As a result of legislative changes introduced by Statutory Instrument SI 2020/1317, from the 1 January 2020, it will no longer be possible to have an address for service (AFS) in the European Economic Area (EEA). Hence, these forms have been revised to require that the address for service must be in the United Kingdom, Gibraltar or Channel Islands. The agent must reside or have a place of business in the United Kingdom, Gibraltar or the Isle of Man. Any references in the forms to requesting a fax number from the applicant have also been removed.

(g) A number of patents and trade mark forms have also been revised by the addition of the ‘forms@ipo.gov.uk’ email address. The following text will be added to these forms: “Send your form(s), saved as PDF(s) to ‘forms@ipo.gov.uk’. For help saving your forms as a PDF see How to file documents with the Intellectual Property Office”.

Patents form 4, 8, 28

(h) Patents form 4 has also been revised to reflect the renumbering of provisions of the Medicinal Products Regulation and Plant Protection Products Regulation. In each case, Article 14(d) is now Article 14(1)(d).

(i) Patents form 8 has been amended by removing note h) which made reference to paying a fee, as no fee is prescribed by the Patents (Fees) Rules for this form.

(j) Patents form 28 has been amended to reformat the “Confirmation of an entry in the register” section, to improve readability.

Patents forms SP1, SP3 and SP4

(k) Patents form SP1, SP3 and SP4 have also been revised to reflect changes to supplementary protection certificate law which come into effect following the end of the transition period.

(l) The forms have been updated to remove references to “EC” Regulations, as these are now retained as UK law.

(m) Patents form SP1 has been revised, with section 8 being amended to refer to marketing authorisation being granted in one or more of the United Kingdom (UK), Great Britain (GB) or Northern Ireland (NI). Section 9 to replace the reference to “the Community” with a reference to the UK or European Economic Area, for clarity on which marketing authorisations are applicable. Section 10 has been amended for clarity. Note e) has been rewritten to be clearer on how authorisations in Switzerland may be relevant. Note f) has been updated to clarify that authorisations granted by the European Medicines Agency apply in NI by virtue of the Northern Ireland protocol.

(n) Patents form SP3 has been updated to reflect the renumbering of certain provisions in the SPC Regulations. Section 5 has been amended to refer to Articles 14(1)(d) of the Regulations and Article 16 of Regulation 469/2009.

(o) Patents form SP4 has been revised to refer to Articles 8(2) and (3) of Regulation 469/2009. A reference to Article 36(1) of Regulation (EC) No 1901/2006 has been replaced with a reference to regulation 58A(2) of the Human Medicines Regulations 2012. The reference to “state” has been removed. Section 7 of the form has been amended to allow for multiple authorisations in the UK, GB or NI to be recorded. Section 8 of the Form has been deleted, as it is no longer necessary to provide proof of authorisations in EU Member States, and section 9 has been revised to remove the reference to section 8 and renumbers as section 8.

Design forms DF2A and DF2C

(p) Design forms DF2A (section 5) has been revised to refer to transitional arrangements which are needed as a result of leaving the European Union (EU) and the end of the Transition Period. These arrangements are for when a deferred design is based on an earlier deferred European Union Intellectual Property Office (EUIPO) or international application designating the EU and specify that the deferment cannot exceed 30 months from the original filing date. A new section 10 has been added which requires the applicant to specify if they had a pending or deferred application at the EUIPO, or a pending deferred application for an international design designating the EU. New section 12 requires details of the pending or deferred EUIPO application and new section 13 requires details of the pending or deferred international application. The guidance notes have also been updated accordingly.

(q) Designs form DF2C has been revised to refer to transitional arrangements which are needed as a result of leaving the EU and the end of the Transition Period. These arrangements are for when a deferred design is based on an earlier deferred EUIPO or international application designating the EU and specify that the deferment cannot exceed 30 months from the original filing date.

Trade mark forms TM3, TM7, TM7F, TM8, TM8N

(r) Trade mark form TM3 has been revised to add new sections 10, 12 and 13 as part of transitional arrangements from leaving the EU and the end of the Transition Period. New section 10 requires the applicant to specify if they had a pending trade mark application at the EUIPO, are entitled to a conversion at the EUIPO, or a pending international trade mark claiming protection in the EU, as of exit day. New section 12 requires details of the pending EUIPO application and new section 13 requires details of the pending international application.

(s) Trade marks forms TM7 and TM7F are being revised to remove European Union Trade Marks from the type of Mark that can be Opposed.

(t) Trade marks forms TM7F, TM8, TM8N have been amended to indicate that in some circumstances, an EEA AFS will be permitted. TM8N has also been altered to allow for the capturing of the filers email address to facilitate correspondence by email.

Patents Forms SP5, SP6

(u) New patents form SP5 has been introduced. This form will allow third party manufacturers to make SPC-protected medicines for export outside the UK or EU. It also allows making and storage of medicines during the last six months of an SPC ready for sale in the UK or EU after the SPC expires. For this exception to apply, under rule 116A(1), third parties must notify us of their intent and this form will allow them to do this.

(v) New patents form SP6 has been introduced. This form needed as due to the NI protocol, under Article 13A of the SPC regulation, SPC applications may be based on an authorisation covering only part of the UK, with it being possible for a later authorisation covering the other part of the UK to be granted. For the protection provided by the SPC to cover additional territory, the applicant must notify the Office of the further authorisation, and this form will allow them to do so.

Trade marks forms, trade marks opt out, international trade marks opt out

(w) A new form, the trade marks opt out form, has been introduced which will allow customers to opt-out of having their comparable EU Trade Mark (EUTM) registered in the UK. Under the Withdrawal Agreement Act, on the 1 January 2021, the IPO will create a comparable UK trade mark for all right holders with an existing EU trade mark. This is because from the 1 January 2021, EUTMs will no longer protect trade marks in the UK. As a result, it is necessary that customers are able to opt-out of this automatic creation of a new right.

(x) A new form, the International trade marks opt out form, has been introduced which will allow customers to opt-out of having their protected international (EU) Trade Mark registered in the UK and receiving a UK comparable trade mark. This is because from 1 January 2021, protected international trade mark registrations designating the EU will no longer be valid in the UK. To address this, on 1 January 2021 we will create a comparable trade mark (IR) in relation to each international (EU) trade mark designation which has protected status immediately before 1 January 2021. As a result, it is necessary that customers are able to opt-out of this automatic creation of a new right.

Designs forms designs opt out, international designs opt out

(y) A new form, the designs opt out form, has been introduced which will allow customers to opt-out of having their registered Community designs (RCDs) recorded on the UK register as a comparable UK design right. This is because from 1 January 2021, registered Community designs (RCDs) will no longer be valid in the UK. To address this re-registered designs will be created. As a result, it is necessary that customers are able to opt-out of this automatic creation of a new right.

(z) A new form, the international designs opt out form, has been introduced which will allow customers to opt-out of having their protected international (EU) design recorded on the UK register as a comparable UK right. This is because International design registrations protected in the EU under the Hague Agreement will have no effect in the UK after 1 January 2021. To address this a re-registered international design from each International (EU) design that holds a protected status immediately before 1 January 2021 will be automatically created. These UK rights will be identical to the re-registered designs being created from registered community designs (RCD). As a result, it is necessary that customers are able to opt-out of this automatic creation of a new right.

(aa) All of the UK design forms, UK patents forms and UK trade mark forms (and information about associated fees) are available from our website.

(ab) Any queries about these Directions should be addressed to:

Legal Section
Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom

Tel: +44 (0) 1633 811154