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 18 August 2021

Changes to patents, designs and trade marks forms made in relation to changes to the GovPay payment system.

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 on 21 August 2021.

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:

Patents forms

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 7 (Statement of inventorship and of right to grant of a patent)
Patents form 9A (Request a search and request a further or supplementary search under section 17(6) or section 17(8))
Patents form 10 (Request for a substantive examination)
Patents form 12 (Payment of renewal fee)
Patents form 14 (Request to reinstate a patent application)
Patents form 15 (Notice of opposition to proceedings before the Comptroller)
Patents form 16 (Application to restore a patent)
Patents form 17 (Request for opinion as to the validity or infringement of a patent)
Patents form 21 (Application to register or give notice of rights)
Patents form 23 (Request for a copy of a document or a register entry)
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)
Patents form 52 (Request to extend a prescribed time limit)
Patents form NP1 (National processing of international patent (UK) application)
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 an SPC)
Patents form SP4 (Application to extend a supplementary protection certificate)
Patents form AF1 (Pay the application fee if it has not already been paid with form 1 or form 9A)

Designs forms

Designs form DF2A (Apply to register one or more designs)
Designs form DF2B (Application to register designs divided from an earlier application)
Designs form DF2C (Application to register a design which registration was deferred)
Designs form DF9A (Renewal of design registration)
Designs form DF12A (Record/cancel a change of ownership, licence or security)
Designs form DF16A (Change of proprietor’s name or address)
Designs form DF19A (Request to invalidate a design registration)
Designs form DF19C (Notice by proprietor to cancel a registration)
Designs form DF21 (Request for a search of the UK designs register)
Designs form DF23 (Request for a certified copy)
Designs form DF29 (Request to restore a registration)
Design right form DRF1 (Reference of dispute to Comptroller)
Design right form DRF2 (Application to be made a party to proceedings)
Design right form DRF3 (Apply to settle/adjust licence of right terms pre August 1989)
Design right form DRF4 (Vary licence of right terms by design right or copyright owner)

Trade mark forms

Trade marks form TM3 (Application to register a trade mark)
Trade marks form TM3A (Request to amend the appropriate class)
Trade marks form TM5 (Request for a statement of reasons)
Trade marks form TM7 (Notice of opposition)
Trade marks form TM7F (Notice of fast track opposition)
Trade marks form TM7G (Request to add grounds to a notice of opposition)
Trade marks form TM9 (Request an extension of time)
Trade marks form TM9R (Request for a retrospective extension of time)
Trade marks form TM11 (Renewal of trade mark registration, renewal additional class, renewal late payment)
Trade marks form TM12 (Request to divide an application)
Trade marks form TM13 (Request to restore and renew a registration)
Trade marks form TM16 (Application to record a change of ownership)
Trade marks form TM16P (Application to record partial assignment)
Trade marks form TM24 (Application to record or amend a security interest)
Trade marks form TM24C (Application to cancel a security interest)
Trade marks form TM26(I) (Application to declare invalidation)
Trade marks form TM26(N) (Application to revoke a trade mark for non-use)
Trade marks form TM26(O) (Application to revoke a trade mark other than non-use)
Trade marks form TM31C (Request for information about events relating to a UK trade mark)
Trade marks form TM31M (Request for event information relating to international trade mark (UK))
Trade marks form TM31R (Request for a certified copy)
Trade marks form TM35 (Regulations governing the use of certification or collective marks)
Trade marks form TM36 (Application to amend the regulations)
Trade marks form TM50 (Application to record a licensee)
Trade marks form TM51 (Application to remove or amend a licence)
Trade marks form TM55P (Notice of Appeal to the Appointed Person (inter parte))

5. Patents forms 3, 14, 16, 21, 52, trade mark forms, 9, 9R, 11, 13 and designs forms 9A, 29 as so set out, replace the corresponding Forms in the Schedule to the Directions made on 31 March 2021 (which came into force on 1 April 2021). The Directions made on 31 March 2021 are, to that extent, revoked.

6. Patents forms 1, 2, 4, 15, 17, 23, NP1, SP1, SP3, SP4, trade mark forms 3, 5, 7, 7F, 12, 16, 16P, 26(I), 26(N), 26(O), 35, 36, 50, 51, 55P and designs forms 2A, 2C as so set out, replace the corresponding forms in the Schedule to the Directions made on 21 December 2020 (which came into force on 1 January 2021). The Directions made on 21 December 2020 are, to that extent, revoked.

7. Patents forms 9A, 10, 12, trade mark forms 24, 31R and designs form 23 as so set out, replace the corresponding forms in the Schedule to the Directions made on 2 November 2020 (which came into force on 9 November 2020). The Directions made on 2 November 2020 are, to that extent, revoked.

8. Patents forms AF1, 34, 49, SP2, trade mark forms 3A, 7G, 24C, 31C, 31M, and designs forms 2B, 19A, 21, Design right form 1, Design right form 2, Design right form 3, Design right form 4 as so set out, replace the corresponding forms in the Schedule to the Directions made on 24 September 2020 (which came into force on 1 October 2020). The Directions made on 24 September 2020 are, to that extent, revoked.

9. The remaining trade marks and designs forms as so set out, replace the corresponding forms.

Julyan Elbro
Acting on behalf of the Comptroller
16 August 2021