By Guy Cooper & Graeme McCallum
The UKIPO’s rules on address for service have changed. As of 1 January, 2021, you will need to provide an address in the UK, Gibraltar or the Channel Islands for all new actions before the UKIPO. This includes:
- filing a new UK patent application or SPC
- engaging in any contentious proceedings
- recording any changes, including changes of name, assignments and licenses
- appointing a representative for a granted European patent designating the UK
The UKIPO will no longer accept an address in the EEA as a valid address for service.
The key implications for both new and existing patent rights are summarised in more detail below.
Summary of Changes
New UK Patent Applications and SPCs
If you file a new UK patent application or an application for an SPC at the UKIPO, you must provide an address for service in the UK, Gibraltar or the Channel Islands.
European Patents Designating the UK
Granted European patents which designate the UK will continue to be transferred onto the UK Register automatically. The proprietor’s address will automatically be recorded as the address for service.
As of 1 January, 2021, if at any time the proprietor wishes to appoint a representative before the UKIPO in relation to a granted European patent, the representative must have an address in the UK, Gibraltar or the Channel Islands.
Existing UK Patent Rights
Actions which do not currently require a valid address for service remain unchanged. This means that a UK address for service is not required when renewing an existing UK patent.
If you filed a UK patent application before 1 January, 2021 and have an address for service in the EEA, you do not need change this address for service in respect to actions and requests that are considered part of the ongoing application process, including:
- requesting an ex-parte hearing
- requesting an extension of time
- filing a divisional application
Similarly, if you are involved in contentious proceedings that were ongoing before 1 January, 2021, and have an address for service in the EEA, you do not need to change this address in order to conclude these proceedings.
However, for all contentious proceedings initiated against an existing UK patent right on or after 1 January, 2021, an address for service in the UK, Gibraltar or the Channel Islands is required in order to engage in those proceedings.
For all other post-grant actions requiring a valid address for service, it is also necessary to provide an address in the UK, Gibraltar or the Channel Islands.
How We Can Help
As a UK-based firm of patent and trade mark attorneys, we will of course be happy to offer representation before the UKIPO for any new or existing UK patent rights and record ourselves as address for service in accordance with the new rules.
Should you require any more general information or wish to discuss specific aspects of these changes in relation to your existing portfolio, or plans for future development of the portfolio, please do not hesitate to get in touch.