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

Changes to Patents, Designs and Trade Marks Forms in connection with the end of the fee reduction period implemented by The Patents, Trade Marks and Registered Designs (Fees) (Coronavirus) (Amendment) Rules 2020 Statutory Instrument

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 come into force when The Patents, Trade Marks and Registered Designs (Fees) (Coronavirus) (Amendment) Rules 2020 Statutory Instrument (SI) ends, that is 1 April 2021.

3.	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 Form 3 (Late Additions and Declarations of Priority) Patents Form 14 (Request to reinstate a patent application) Patents Form 16 (Application to restore a patent)
Patents Form 21 (Application to register or give notice of rights) Patents Form 51 (Appointment or change of agent or attorney) Patents Form 52 (Request to extend a prescribed time limit)

Designs Form DF9A (Renewal of design registration) Designs Form DF29 (Request to restore a registration)

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)
Trade Marks Form TM13 (Request to restore and renew a registration)

4.	Trade Marks Forms 9 and 9R, Patents Forms 16, 21, 51 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.

5.	Patent Forms 3, 14, 52 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.

6.	Designs Form 9A and Trade Marks Forms 11, 13, 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.

7.	Designs Form 29 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.

Julyan Elbro
Divisional Director Patent Examination Division Acting on behalf of the Comptroller
18 March 2021

Guidance and notes on the changes to patents trade marks and designs forms made in relation to the end of the fee reduction period implemented by The Patents, Trade Marks and Registered Designs (Fees) (Coronavirus) (Amendment) Rules 2020 Statutory Instrument

(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.

(e)	The Patents, Trade Marks and Registered Designs (Fees) (Coronavirus) (Amendment) Rules 2020 Statutory Instrument (SI) ends on 1 April 2021. This SI acted to reduce some patent, trade mark and designs fees from 30 July until 31 March 2021. From the 1 April these fee reductions will no longer apply. Hence these forms have been revised to reflect these fee changes.

Trade Marks Forms TM9, TM9R, TM11, TM13

(f)	Trade Marks Forms TM9, TM9R, TM11, TM13 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”.

(g)	Trade Marks Forms TM9 and TM9R have been revised to include the text “Fee
£100” in the top left underneath the form title and a Fee and Payment sheet has been added as the final sheet of these forms.

(h)	Trade Marks Form TM11 has been revised such that the text in box 7 under ‘Late renewal fees’ which states “The relevant fee (if any) must be paid if you are renewing up to six months after the renewal date” has been replaced with “£50
(i)	 additional fee must be paid if you are renewing up to six months after the renewal date”.
(j)	Trade Marks Form TM13 has been revised such that the text in box 6 under ‘Restoration fee’ which states “Relevant fee (if any)” has been replaced with "£100" and in the ‘Restoration Fee’ box the "£" has been replaced with "£100".

Patent Forms PF3, PF14, PF16, PF21, PF51, PF52

(k)	Patent Forms PF14, PF16, PF52 have been revised to include a Fee and Payment sheet as the final sheet of these forms.

(l)	Patents Form PF3 has been revised to include the text "We will only process this form with this section complete (one form per payment)" to the top of the Fee and Payment sheet.

(m)	Patents Form PF21 has been revised to clarify wording in box 6 by replacing “An “Address for service” in the United Kingdom, Gibraltar or the Channel Islands to which all correspondence should be sent. (see note (g): (including postcode)” to "Name of your agent (if you have one) Address for Service’ in the United Kingdom, Gibraltar or the Channel Islands to which all correspondence should be sent. (see note (g))"

(n)	Patents Form PF51 has been revised to clarify wording in box 4 by replacing “‘Address for service to which all correspondence should be sent (including postcode). This may be in the United Kingdom, Gibraltar or the Channel Islands. (see note (e))" with "Address for service (including postcode) in the United Kingdom, Gibraltar or the Channel Islands to which all correspondence should be sent. (see note (e)).”.

Design Forms DF9A, DF29

(o)	Design Form DF9A has been revised such that the text in box 5 which states “Amount of late renewal fee (if any). (If you are renewing up to six months after the renewal date.)” has been replaced with "Amount of late renewal fee. (You must pay this if you are renewing up to six months after the renewal date.)". Text has also been added to the top right corner stating ‘renew online for faster payment’ including an associated hyperlink below the text.

(p)	Design Form DF29 has been revised to add the text “Official fee due with this form” in the top left underneath the form title and a Fee and Payment sheet has been added as the final sheet of this form.

(q)	All of the UK Design Forms, UK Patents Forms and UK Trade Mark Forms (and information about associated fees) are available from our website.
(r)	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

Withdrawing Patent Applications

This notice seeks to inform applicants and practitioners of the method the Intellectual Property Office recommends for withdrawing patent applications.

Background
Any request to withdraw an application is always an important action and is dealt with as quickly as possible in the Office. However, quick action in the Office becomes crucial when a withdrawal request is received for an application which is soon to be published. We of course wish to avoid erroneous publication.

Ways of withdrawing applications
Withdrawal of a patent application can be made by:

•	emailing  withdraw@ipo.gov.uk 
•	faxing the Office on 01633 817777
•	writing to the Office

We highly recommend that the email option be used, as this will ensure that the request is dealt with quickly by a dedicated team of staff. Full details of this service can be found at Withdrawal of patent applications by e-mail.

Notifying the Office of withdrawal in time to prevent publication
An application for withdrawal in time to prevent publication must be received in this Office by 23:59 on the day before preparations for publication are complete (the PPC date). The official letter notifying applicants of the PPC date for their application will only be received 2 or 3 days prior to the PPC date. That leaves a very short time in which to notify the Office of withdrawal.  If the email message or written notification is not received by 23:59 on the day before the PPC date, it will be too late to prevent publication.

Therefore the earlier applicants and practitioners can make decisions about withdrawal and notify the Office, the better. 

Further guidance on withdrawal of patent applications is available.

If you have any queries about this notice, please contact:

Steve Bender  or  Christine Farrington
Room 2R33
Concept House
Cardiff Road
Newport
NP10 8QQ
+44 (0)1633 814422  or  +44 (0)1633 814701

Provision of Information from the Intellectual Property Office

On-Line Web Services

A number of free services are available via our web site.
 
esp@cenet
This service provides an interface to the published patent application databases of the  Intellectual Property Office, the European Patent Office and other European national patent offices, as well as access to the PCT database of published patent applications.  A full copy of the specification, claims and drawings may be viewed if available.

Designs Image Search
This service provides access to images of UK registered designs along with bibliographic information.

Trade Mark Text
This service provides searches for trade marks matching/starting with specified text.

Trade Mark Proprietor
This service provides searches for trade mark proprietors.

Trade Mark Classification Index
The index serves as a guide to the classes of goods and services to specify when applying for Trade Mark registration.  With over 70,000 terms, the index shows which class to put each term in.

Legal Decisions
This service provides the text of reasoned decisions issued by the office since the beginning of 1998.

Status Information
These services provide the status information for Patents, Supplementary Protection Certificates, Trade Marks and Designs.

Other Services

The Status Information and further information can also be obtained on paper from the office.  Some of the information available is shown below, along with the relevant prices.

Patents: Request for uncertified copy from file or register £5

Designs: Request for uncertified copy of extract £5

Trade Marks: Request for uncertified copy from file or register £5

Note  Trade Marks & Designs: The cost is £5 per file copied, though we reserve the right to quote for our actual costs where particularly large files are involved.

General: Cost, per page, of faxing information   £1  (plus VAT)

Payment

Deposit accounts: Customers may charge orders against their account with the Office.  In such cases the deposit account number should be quoted on the order.

Credit and debit cards: Full details on how to pay via Credit or Debit can be found on our website.

Cheque: These should accompany any order, be crossed "Account Payee Only" and made payable to "The Intellectual Property Office".  Payments from overseas must be in sterling drawn on a UK clearing bank.

Orders
Post: Sales, Concept House, Cardiff Road, Newport, South Wales NP10 8QQ

e-mail (Deposit Account Holders only): sales@ipo.gov.uk

Telephone (Deposit Account Holders and payments by credit and debit card only): +44(0)1633 813651

Fax (Deposit Account Holders and payments by credit and debit card only): 
+44(0)1633 817777.

Patent Publication Enquiry Service

The Patents Publication Enquiry Service www.ipo.gov.uk/patent/p-find/p-find-publication.htm enables you to search for, view and download newly published, granted and corrected GB patents. Patents are added on a weekly basis on the day of publication (usually every Wednesday). 

The following types of GB published documents are available:
 
Document code A – for the published "A" application. 

Document code A8 – for the corrected front page of a published "A" application (changes to bibliographical data only). 

Document code A9 – for the complete re-issue of a published "A" application (as a result of a correction). 

Document code B – for the granted ‘B’ specification. 

Document code B8 – for the corrected front page of a granted "B" specification (changes to bibliographical data only). 

Document code C - for complete re-issue of a granted "B" specification (as a result of a correction or amendment). 

If you have any queries regarding this notice please contact Chris Evans - Tel: 01633 814641, or via e-mail: chris.evans@ipo.gov.uk