Guidance and notes on changes to patents, trade marks and designs forms made in relation to the end of the fee reduction period
Published 31 March 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.
(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 2020 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: 鈥淐hecklist Please make sure you have remembered to: Provide the trade mark number(s); Sign and date the form鈥�.
(g) Trade marks forms TM9 and TM9R have been revised to include the text 鈥淔ee 拢100鈥� 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 鈥楲ate renewal fees鈥� which states 鈥淭he relevant fee (if any) must be paid if you are renewing up to six months after the renewal date鈥� has been replaced with 鈥溌�50 additional fee must be paid if you are renewing up to six months after the renewal date鈥�.
(i) Trade marks form TM13 has been revised such that the text in box 6 under 鈥楻estoration fee鈥� which states 鈥淩elevant fee (if any)鈥� has been replaced with 鈥溌�100鈥� and in the 鈥楻estoration Fee鈥� box the 鈥溌b� has been replaced with 鈥溌�100鈥�.
Patent Forms PF3, PF14, PF16, PF21, PF51, PF52
(j) Patent forms PF14, PF16, PF52 have been revised to include a fee and payment sheet as the final sheet of these forms.
(k) Patents form PF3 has been revised to include the text 鈥淲e will only process this form with this section complete (one form per payment)鈥� to the top of the fee and payment sheet.
(l) Patents form PF21 has been revised to clarify wording in box 6 by replacing 鈥淎n 鈥淎ddress for service鈥� in the United Kingdom, Gibraltar or the Channel Islands to which all correspondence should be sent. (see note (g): (including postcode)鈥� to 鈥淣ame of your agent (if you have one) Address for Service鈥� in the United Kingdom, Gibraltar or the Channel Islands to which all correspondence should be sent. (see note (g))鈥�
(m) Patents form PF51 has been revised to clarify wording in box 4 by replacing 鈥溾楢ddress 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))鈥� with 鈥淎ddress for service (including postcode) in the United Kingdom, Gibraltar or the Channel Islands to which all correspondence should be sent. (see note (e)).鈥�
Design forms DF9A, DF29
(n) Design form DF9A has been revised such that the text in box 5 which states 鈥淎mount of late renewal fee (if any). (If you are renewing up to six months after the renewal date.)鈥� has been replaced with 鈥淎mount of late renewal fee. (You must pay this if you are renewing up to six months after the renewal date.)鈥�. Text has also been added to the top right corner stating 鈥榬enew online for faster payment鈥� including an associated hyperlink below the text.
(o) Design form DF29 has been revised to add the text 鈥淥fficial fee due with this form鈥� in the top left underneath the form title and a fee and payment sheet has been added as the final sheet of this form.
(p) All of the UK design forms, UK patents forms and UK trade mark Forms (and information about associated fees) are available from our website.
(q) 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