Guidance and notes on the changes to patents, trade marks, and designs forms made in relation to changes to the GovPay payment system
Published 18 August 2021
(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) 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 3, Patents form 4, Patents form 7, Patents form 9A, Patents form 10, Patents form 12, Patents form 14, Patents form 15, Patents form 16, Patents form 17, Patents form 21, Patents form 23, Patents form 34, Patents form 49, Patents form 52, Patents form NP1, Patents form SP1, Patents form SP2, Patents form SP3, Patents form SP4, Patents form AF1,Trade marks form TM3, Trade marks form TM3A, Trade marks form TM5, Trade marks form TM7, Trade marks form TM7F, Trade marks form TM7G, Trade marks form TM9, Trade marks form TM9R, Trade marks form TM11, Trade marks form TM12, Trade marks form TM13, Trade marks form TM16, Trade marks form TM16P, Trade marks form TM24, Trade marks form TM24C, Trade marks form TM26(I), Trade marks form TM26(N), Trade marks form TM26(O), Trade marks form TM31C, Trade marks form TM31M, Trade marks form TM31R, Trade marks form TM35, Trade marks form TM36, Trade marks form TM50, Trade marks form TM51, Trade marks form TM55P, Designs form DF2A, Designs form DF2B, Designs form DF2C, Designs form DF9A, Designs form DF12A, Designs form DF16A, Designs form DF19A, Designs form DF19C, Designs form DF21, Designs form DF23, Designs form DF29, Design Right form DRF1, Design Right form DRF2, Design Right form DRF3, Design Right form DRF4.
(e) Our payment provider for the GovPay system will change on 21 August 2021. This change will generate a new Payment Reference Code format. The above forms have been revised to reflect the new style of Payment Reference Code required.
Trade marks forms: TM3, TM3A, TM16, TM26I, TM26N, TM26O, TM36, TM11, TM13, TM16, TM16P, TM7F, TM7, TM7G, TM55P, TM5, TM9, TM9R, TM12, TM24, TM24C, TM31C, TM31M, TM31R, TM35, TM50, TM51
(f) Trade marks forms TM3, TM3A, TM26I, TM26N, TM26O, TM36, TM11, TM13, TM16P, TM7F, TM7, TM7G, TM55P, TM5, TM9, TM9R, TM12, TM16, TM24, TM24C, TM31C, TM31M, TM31R, TM35, TM50, TM51 have been revised to update the Fee and Payment sheet to replace the text “As proof of payment, write below the 16-digit reference number displayed from the online payment screen.” with “As proof of payment, write the 10-character reference code displayed from the online payment screen”.
(g) Trade mark form 3A has been revised to replace the text in section 2 “The address must be in the United Kingdom, European Economic Area (EEA) or the Channel Islands.” with “The address must be in the United Kingdom, Gibraltar, or the Channel Islands.”
(h) Trade mark form 16 has been revised in section 8 to replace the text “signature (old owner) with “Signature(s) (Old Owner)” and “signature (new owner)” with “Signature(s) (New Owner)”. The text “This should be in the dd/mm/yyyy format and must not be in the future.” has also been added in section 6.
(i) Trade mark forms 3, 3A, 16, 26I, 26N, 26O, 36, 11, 13, 16P, 7F, 7, 7G, 55P, 5, 9, 9R, 12, 24, 24C, 31C, 31M, 31R, 35, 50, 51 have been revised to make the checklist box consistent with the other trade marks forms, with the addition/replacement of the checklist box stating: “Checklist Please make sure you have remembered to: Provide the trade mark number(s); Sign and date the form.”
(j) Trade mark forms 7, 26I, 26N, 26N have been revised to include a warning that a copy of the form is sent to the trade mark owner.
Patent forms: AF1, PF1, PF2, PF3, PF4, PF7, PF9A, PF10, PF12, PF14, PF15, PF16, PF17, PF21, PF23, PF34, PF49, PF52, NP1, SP1, SP2, SP3, SP4
(k) Patent forms AF1, PF1, PF2, PF3, PF4, PF9A, PF10, PF12, PF14, PF15, PF16, PF17, PF21, PF23, PF34, PF49, PF52, NP1, SP1, SP2, SP3, SP4 have been revised to update the Fee and Payment sheet to replace the text “As proof of payment, write below the 16-digit reference number displayed from the online payment screen.” with “As proof of payment, write the 10-character reference code displayed from the online payment screen.”
(l) Patent form PF1 has been revised to replace the warning note text “The name and address of the applicant will be published on our website and are likely to appear in external search engine results.” with “The name and address of the applicant, the agent, and the address for service will be published on our website and are likely to appear in external search engine results.”
(m) Patent form PF7 has been revised to include in the notes section the text “The name(s) and address(es) provided here will be published online as part of the application process (see warning note below)”. The text “Warning - The name(s) and address(es) of the inventor(s) will be published online when the patent application is published (approximately 18 months after filing) and are likely to appear in external search engine results. You should provide a business address or a PO box address if the inventor(s) does not want their home address published online. Alternatively, an inventor may apply in writing to waive their right to have their name and address mentioned. The IPO will withhold an inventor’s address on request; reasons must be provided if the inventor also wishes to withhold their name.” has also been added.
(n) Patent form PF21 has been revised to include the text “licensee or security holder” in section 4 and “cancellation of licence or security” in section 5. An additional section has been added for “Date of transfer of ownership, grant or cancelation of a security or licence or other rights. This should be in the dd/mm/yyyy format and must not be in the future. (See note (e)”. A new tick box has been added in section 7 for “Address for Service to be the new owners address given in box 4”. The text in section 7 “Agent or address for service to be used by the new owner: If you do not know these details, we will use the address that has been provided in box 4 as the new address for service” has been replaced with “New owners “Address for Service” in the United Kingdom, Gibraltar or the Channel Islands to which all correspondence should be sent. (See note (f)). If you do not know these details, tick the box below to confirm the address provided in box 4 will be used as the new address for service.” The notes have been revised to reflect the above changes.
Design forms: DF2A, DF2B, DF2C, DF9A, DF19A, DF21, DF23, DF29, DRF1, DRF2, DRF3, DRF4
(o) Design forms DF2A, DF2B, DF2C, DF9A, DF19A, DF21, DF23, DF29, DRF1, DRF2, DRF3, DRF4 have been revised to update the Fee and Payment sheet to replace the text “As proof of payment, write below the 16-digit reference number displayed from the online payment screen.” with “As proof of payment, write the 10-character reference code displayed from the online payment screen.”.
(p) Designs form DF2A has been revised to replace the text “As part of the registration process your name, address and details of your design are published.” with “As part of the registration process your name, address and details of your design are published online.” The heading ‘Address’ has been replaced by “Address for service” and the text underneath replaced by “If this address is not within the United Kingdom, Gibraltar or Channel Islands then in section 2 you must provide an address for service.” Under the heading ‘Declaration’ the text “I understand and accept that: I cannot change the design applied for once submitted The name and address of the owner(s) will be published online if registered (see guidance notes for section 1) All application fees are non-refundable (even if the design is not accepted)” has been added. The text “Complete if you have no representative and would like us to correspond with you by email.” has been replaced by “This is the email address we will use for correspondence with your representative. All correspondence will go to this email address and not the email address in section 1.” The section “What is your Design” has been replaced by “Indication of Product Please tell us the product to which your design is intended to be applied or in which it is intended to be incorporated For example, furniture, toys, clothing, or a graphic representation.” and an additional box and text “Add a description of the design (optional)” has been added. The guidance section has been revised to reflect the above changes.
(q) Designs form DF2B has been revised to delete the text ‘Designs ADP number (if you know it)’ in section 4.
(r) Designs form DF2C has been revised to delete the text ‘Designs ADP number (if you know it)’ in section 3.
(s) Designs form DF2C has been revised to delete the text ‘Designs ADP number (if you know it)’ in section 3.
(t) Designs form DF12A has been revised to include an additional section with tick boxes for “Are you: Recording a change of ownership If so, complete sections 5 and 6. Recording or cancelling a Licence or Security If so, complete sections 7 and 8”, an additional section for Stamp Duty Declaration, and tick boxes have been added to record or cancel a licence or security. Section 7 has been deleted, the text “This should be in the dd/mm/yyyy format and must not be in the future. (See notes)” has been added to section 8 and the text “(List on a separate continuation sheet if there is not enough space on the form.)” added to section 2. The text “In the case of an assignment, if the form is not signed by the old owner or their representative, a copy of the transaction document will need to be provided.” and “Any change to the ownership and grant or cancelation of a security or licence must have occurred prior to the filing of the form.” Has been added to the notes section.
(u) Designs form DF19C has been revised to replace the text “Full name of the proprietor.” with “Full name and address (including postcode) of the proprietor.”. The text “Name, daytime phone number and email address of the person we should contact in case of a query.” has been added to section 6 and the notes text has replaced with “Use this form to cancel your design registration. Once we action the cancellation, you cannot decide to reinstate the registration. The cancellation will take effect from the date of the registrar’s letter. The cancellation can take effect from an earlier date if you provide reasons why this is needed in a covering letter. Please use a separate form for each registered design you wish to cancel. Please note that the details of the design, including your name and address, will remain on the online register for at least 7 years after cancellation takes effect.”.
(v) All of the UK design forms, UK patents forms and UK trade mark forms (and information about associated fees) are available from our website.
(w) 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 811433