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Address for service rules - UK patents, trade marks and designs

Date: 30 November 2020

Do I need an address for service in the UK for my UK patents, trademarks and designs?

 

The answer is, generally, “yes”, after 1 January 2021 and going forward, but there are exceptions whereby you can retain whatever existing address for service you may have in the EEA.

 

The exceptions are:

  • You do not need a UK address for service for existing proceedings and pending applications;
  • When you receive a “comparable” right – i.e. a UK trademark or design registration corresponding to your granted EU trademark or design, you do not need a UK address for service for the new comparable right for 3 years from 1 January 2021, including for any proceedings begun within those first 3 years. 

 

Just to recap, you will need a UK address for service for any new action of any kind, including

  • a new patent, trademark or design application, 
  • opposition of/defending opposition of a UK trademark (that is not a comparable right)
  • challenging a UK patent/design/trademark

 

European Patent (UK) patent validations

 

Regarding UK validations of EP patents, appointment of a UK representative is optional, but if one is appointed, it must be in the UK. Granted European Patents which designate the UK are transferred onto the UK Register automatically. No validation is required. They are transferred with the applicant’s details only, as the UK IPO must have authorisation before it can recognise any representative. This is current practice and will not change.

 

From 1 January 2021 if you wish to appoint a representative, they will need to have an address in the UK. There may be occasions where you already have a UK address for service for your European Patent, for example, the UK address of Maucher Jenkins if we acted for you at the European Patent Office. We will still need to file authorisation at the UKIPO so that the Office knows we continue to act for you in the UK.

 

Plant Variety Rights

 

Nothing specific to plant variety rights has been published by the UKIPO regarding address-for-service requirements, but the EU Withdrawal Agreement refers to plant variety rights (Art 54(1)(c)), so holders of such rights are not required to have a correspondence address in the UK the 3 years from 1 January 2021 (Art 55(2)). Thus, the situation is similar to other rights – if a representative is desired or required, then they must be a UK representative.

 

Any EU plant variety applications pending on 31 December 2020 must be re-applied for in the UK via the Animal and Plant Health Agency.

 

Conclusion

 

The above is a summary according to rules published by the UK government and laid before parliament to be passed before the end of 2020, when the Brexit transition period ends.

 

If you obtained your European patent through another firm based in the EEA, please inquire about appointing us as address for service in the UK.  There are strong reasons for doing so.

 

As far as EU rights are concerned (EU trademarks and designs), we have already appointed our Munich or Freiburg address for all EU rights under our responsibility and we will notify clients of their comparable UK rights and appoint our London address for those rights.

 

 

For more on how your intellectual property rights will be affected by Brexit, please see our Brexit resources here: Brexit Resources 

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