Statutory guidance

Guidance and notes on the changes to patents, trade marks, and designs forms made to allow for more efficient processing

Published 28 June 2022

(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.

Design forms

• Designs form DC1 (Confirmation of convention country priority claim)
  
• Designs form DF1A (Appointment or change of agent or contact address)
  
• Designs form DF2A (Application 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 DF5 (Request for a statement of reasons for registrar’s decision)
  
• 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 DF19B (Notice of counter-statement)
  
• 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)
  
• Designs form DF55 (Notice of appeal to the appointed person)
  
• Designs form DRF55 (Notice of appeal to the appointed person - unregistered design right)
• 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 settly/adjust licence of right terms per August 1989)
  
• Design Right form DRF4 (Vary licence of right terms by design right or copyright owner)
  
• Designs form Designs opt out (Opt out of holding a re-registered design)
  
• Designs form International designs opt out (Opt out of holding a re-registered design (former International registration))
  

Patent forms

• Patents form AF1 (Pay the application fee if it has not already been paid with Form 1 or Form 9A)
  
• 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 8 (Request for authorisation of the release of sample biological material)
  
• Patents form 8A (Notice of intention to restrict samples of biological material)
  
• Patents form 9A (Request a search – International applications only, Request a search for a UK application 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 20 (Request to correct a name or address)
  
• 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 28 (Apply for a patent register entry to show licenses are available as of right)
  
• Patents form 30 (Cancel entry in register that licences under the patent are available as of right)
  
• 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 51 (Appointment or change of agent or attorney)
  
• Patents form 52 (Request to extend a prescribed time limit)
  
• Patents form 54 (Filing a translation in connection with a European patent or a European Patent application)
  
• 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 SP5 (Notification under the Supplementary Protection Certificate ‘manufacturing waiver’)
  
• Patents form SP6 (Notification of marketing authorisation(s) granted after submission of an application for a Supplementary Protection Certificate)

Trade marks forms

• Trade marks form TM3 (Application to register a trade mark)
  
• Trade marks form TM3A (Request to amend the appropriate class)
  
• Trade marks form TM4 (Application to transform a Madrid Protocol Designation)
  
• Trade marks form TM5 (Request for a statement of reasons for registrar’s decision)
  
• Trade marks form TM7 (Notice of opposition and statement of grounds)
  
• Trade marks form TM7F (Notice of FAST TRACK opposition and statement of grounds)
  
• Trade marks form TM7G (Request to add grounds to a notice of opposition)
  
• Trade marks form TM8 (Notice of defence and counterstatement)
  
• Trade marks form TM8N (Notice of defence for the use in revocation on the grounds on non-use)
  
• Trade marks form TM9 (Request for an extension of time before the period has expired)
  
• Trade marks form TM9C (Request for a cooling off period)
  
• Trade marks form TM9E (Request for an extension to cooling off period)
  
• Trade marks form TM9R (Request for a retrospective extension of time)
  
• Trade marks form TM9T (Request to terminate a cooling off period)
  
• 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 TM12R (Request a divide a registered trade mark)
  
• 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 of goods and/or services)
  
• Trade marks form TM17 (Request to merge registrations)
  
• Trade marks form TM21A (Change of owner’s name, address or email)
  
• Trade marks form TM21B (Change of details to an application)
  
• Trade marks form TM22 (Notice to surrender a registration)
  
• Trade marks form TM23 (Notice to partially surrender a registration)
  
• 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 reasons of non-use)
  
• Trade marks form TM26(O) (Application to revoke a trade mark for reasons other than non-use)
  
• Trade marks form TM26R (Application to rectify the register)
  
• Trade marks form TM27 (Application to intervene in proceedings)
  
• Trade marks form TM28 (Application to record a concurrent registration)
  
• Trade marks form TM29 (Application to set aside cancellation of application; revocation; invalidation or registration)
  
• 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 TM33 (Appointment or change of representative for TM owner)
  
• Trade marks form TM33P (Appointment or change of representative for opponents)
  
• Trade marks form TM35 (Regulations governing the use of certification or collective marks)
  
• Trade marks form TM36 (Application to amend the regulations governing the use of marks)
  
• Trade marks form TM50 (Application to record a licensee)
  
• Trade marks form TM51 (Application to remove or amend the recordal of a licence)
  
• Trade marks form TM53 (Request to proceed to evidence rounds)
  
• Trade marks form TM55 (Notice of appeal to the appointed person (ex parte))
  
• Trade marks form TM55P (Notice of appeal to the appointed person (inter parte))
  
• Trade marks form Trade marks opt out (Opt out of holding a comparable Trade Mark)
  
• Trade marks form International trade marks opt out (Opt out of holding a comparable Trade mark (former International registration)

(e) The forms above have been revised to provide a link to our privacy notice relating to the administration of IP rights, rather than the more general personal information charter. This will provide customers with a direct link to the information they need about how we handle their personal data when we are processing IP rights.

Designs Forms DF2A, DF2B, DF2C, DF12A, DF55

(f) Designs Forms DF2A has been revised at section 5 to include the additional words “and publish” and to remove the text “I cannot change the design applied for once submitted” from the section 13 declaration. This is to improve accuracy and clarity. DF2A has also been revised to remove references to the special transitional arrangements for leaving the EU, as these references are no longer relevant.

(g) Designs Form DF2B has been revised to replace the text of question B “Which product or products is the design for?” with “What product is your design going to be used on or incorporated into?”, “For example, furniture, toys, clothing or a graphic.” and “Note: brand names must not be used.”. This brings the form into alignment with the wording of the online Designs Forms.

(h) Designs Form DF2C has been revised so that the notes section no longer refers to the special transitional arrangements for leaving the EU.

(i) Designs form DF12A has had section 11 updated, to separate out the space for a signature and name into separate fields, making use of the form clearer.

(j) Designs Form DF55 has been revised to take into account that applicants can also appeal an ex parte decision, as follows. Section 5 has been revised to split it into two parts, the first part entitled “Inter partes” in place of “Interest in the design” and replacing the text “Tick one of the options” with “If your application relates to an appeal following an inter partes decision (a decision in proceedings between two or more parties) please tick the appropriate box.”. The second part of section 5 has been entitled “Ex parte” and includes the additional text “If your application relates to an appeal following an ex parte decision please tick the appropriate box.”. Three additional check boxes have been included in the second part of section 5, with accompanying text “Applicant”, “Applicant’s representative” and “Other” respectively, allowing for this additional information to be provided. Section 6 has been revised, reducing it to three check boxes having the replacement text “Ex parte”, “Decision on substance (Inter partes)” and “Procedural decision (Inter partes). The previous check-box text of section 6 has been removed.

(k) DF55 has also been revised as follows. The information box at the top of the form has been revised, to state that when appealing a registrar’s decision made in license of right proceedings, “DRF55” is to be used instead. Previously no form number was given. Section 4 has been revised to include an entry field for email address of the person making the request, carrying the text “Email address” and “In order to enable us to correspond with you by email, please provide an email address to be used for the purposes of these proceedings and any subsequent appeal to the Appointed Person”. This brings the form into alignment with similar forms for trademarks. An additional check box has been added to the checklist with accompanying text “Send a copy to the other party if the appeal relates to an inter partes decision”, helping to ensure correct submission.

Trade Marks Form TM3A, TM7, TM11, TM16, TM21A, TM21B, TM22, TM26(I), TM26(N), TM26(O)

(l) Trade Marks Form TM3 has been revised to remove references to the special transitional arrangements for leaving the EU, as were set out in the Directions which came into force in January 2021, as these references are no longer relevant.

(m) Trade Marks Form TM3A has been revised to replace the main heading “Application to add extra classes – USE ONLY WHEN ADVISED BY AN EXAMINER” with “Application to transfer incorrectly classified goods or services to the appropriate class prior to registration”. This is to help make sure the form is used correctly.

(n) Trade Marks Forms TM7, TM26(I), TM26(N), TM26(O) have been revised to replace the text in section 3 “Complete if you have no representative and would like us to correspond with you by email” with “In order to enable to us to correspond with you by email, please provide an email address to be used for the purposes of these proceedings and any subsequent appeal to the Appointed Person”.

(o) Trade Marks Form TM11 has been revised, replacing the text on the payment page “To check the correct fee for this form, search on GOV.UK for ‘design forms and fees” with “To check the correct fee for this form, search on GOV.UK for ‘trade marks forms and fees”.

(p) Trade Marks Form TM16 has had section 4 updated, so that it directs to section 5 instead of section 4. The text in section 12 “Your reference” and “Complete if you like us to quote this in communications with you, otherwise leave blank.” has been removed, along with the associated entry field, as this repeated the content of section 1.

(q) Trade Marks Form TM21A has been revised at section 7 to include an entry field for the email address of the person making the request, accompanied by the text “Email address” and “Person making this request”.

(r) Trade Marks Form TM21B has been revised, to remove the text “Add classes, use form TM3A” from the information box at the top of the form. This aligns with the concurrent changes to TM3A, as TM3A should not be used to add classes in general.

(s) Trade Marks Form TM22 has been revised to replace the opening text “Notify us in writing if you want to withdraw a trade mark application” with “You can email [email protected] to withdraw a trade mark application which is not yet registered”

Patents Forms AF1, 1, 10, 20, 21, 28, 51

(t) Patents Forms AF1, 1, 10 have been revised to add an indication of the correct paper filing fee. This aligns with our trade marks forms and is intended to help ensure the correct fee rather than the discounted online fee is paid at filing. The text “Fee £112.50” has been added to the top of Patents Form AF1, “no fee immediately due” and “Fee £90 [if paid when filing this form]” has been added to the top of Patents Form 1 and “Fee £130 + £10 for each page of description over 35” has been added to the top of Patents Form 10.

(u) Patents Forms 20, 28 and 51 have been revised as follows. Patents Form 20 has been updated to replace the text at note g) and Patents Form 28 has been revised to replace the text at note d) in each case with “Any agent you appoint must have an address for service in the United Kingdom (including the Isle of Man), Gibraltar or the Channel Islands. They must also reside or have a place of business in the UK, Isle of Man or the European Economic Area.” and “You can appoint an agent or address for service by sending us a completed Patents Form 51 or a letter giving the appropriate details.” Patents Form 51 has been similarly revised to replace the text at note e) with “You must have an address for service in the United Kingdom (including the Isle of Man), Gibraltar or the Channel Island. You must also reside or have a place of business in the UK, Isle of Man or European Economic Area.” The text of Patents Forms 20, 28 and 51 within the notes listed above has also had the following text added: “You do not need to provide this information on the form, but we may ask to confirm it if the agent’s address for service is in Gibraltar or the Channel Islands.” These changes align the forms with Patents Form 21 and reflect legislative change introduced by Statutory Instrument SI 2020/1317, as it is no longer possible to have an address for service in the European Economic Area (EEA).

(v) Patents Form 20 has also been revised to add new check boxes to confirm there has been no change of ownership, aligning the form with trade marks form TM21A and helping to ensure that the correct form is used in appropriate circumstances. A new check box has been added within section 3, with the accompanying text “I confirm that the corrected or new name in this section does not reflect a change of ownership of the patent”. A new entry field within section 8 has been added with corresponding text “Declaration”, “I declare that there has been no change in the ownership of the patent(s) and that I have the authority to request this change”. A new entry field has also been provided within section 8 with accompanying text “Name (BLOCK CAPITALS)”. A quotation mark has also been removed from section 7.

(w) Patents Form 21 has been revised at note g) to refer to “Part 10” in place of “Part 9” and a quotation mark has been removed from section 7. This corrects residual inaccuracies.

(x) Patents Form 51 has also been revised to remove quotation marks from section 3 and add an entry field within section 4, having the accompanying text “Name of agent”. Section 7 has been revised to replace the text “if any, of a contact point for the applicant” with “of the new agent”.

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

(z) 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 811224