Government response to call for views on Address for Service (AfS)

Question 1

Executive summary

Accepted Answer

1. This document is the government’s response to the ‘call for views’ on a proposal to amend the Intellectual Property Office’s (IPO’s) rules governing an ‘address for service’ (AfS). The proposal was to remove the existing reference to the European Economic Area (EEA). This document summarises the responses received and outlines the government’s approach.

2. The ‘call for views’ asked questions about the impact of the proposal, and the extent of any changes needed. It also included some questions about a couple of other issues the IPO was interested in exploring as possible areas for action in the future. These included the use of e-mail addresses and the treatment of European Patents when they come into force in the UK.

3. The initial questions dealt with the details of the respondents, including who they worked for, the size of the company, etc. These are dealt with briefly in the main body of this document. The other questions are given in full, with a brief description of the general tenor of responses. Where appropriate, comments in reply are incorporated.

4. Stakeholders were overwhelmingly supportive of the proposed change, and raised various other issues, including some which are outside the scope of the proposal, such as the rights of intellectual property (IP) professionals to appear before the Intellectual Property Office (IPO).

5. The government would like to thank all those who responded.

Question 2

Government response

Accepted Answer

6. In the light of stakeholders’ responses to the ‘call for views’, and its overall approach to the UK’s exit from the EU, the government will now take forward the necessary legislative changes. The AfS rules will be amended to remove the reference to the EEA. The amended rules will apply to such actions as new applications, new oppositions and to any other proceedings already covered by the existing AfS rules, which are instigated after the end of the Transition Period (TP). A UK AfS will not be required if the only action is for the renewal of registered or granted rights, in line with the treatment of renewals under the existing rules. The rules will include transitional provisions for ongoing cases. They will also take account of Article 55(2) of the Withdrawal Agreement ^{[footnote 1]} which deals with registered rights transferred to the IPO’s registers from those of the EU Intellectual Property Office (EUIPO).

7. Subject to parliamentary timetabling, the government intends for the new rules to come into force on 1 January 2021. Business guidance will be published as soon as possible before then.

Question 3

Background

Accepted Answer

8. Current rules say that an application for a patent, trade mark or design must include a correspondence address, or AfS. This must be within the UK, EEA, or Channel Islands. Similar rules also apply for other proceedings before the office.

9. The Transition Period (TP) relating to the UK’s exit from the EU ends on 31 December 2020. At that point the UK will no longer be treated as if it is a member state of the EU. EU laws governing rights of representation before the EUIPO will not apply to UK IP representatives. Under the Withdrawal Agreement, UK trade mark attorneys will no longer have rights of representation before the EUIPO, except for actions pending at that date. When the TP ends, these arrangements would mean that an asymmetry between the positions of UK and EU IP professionals would be created, if the EEA AfSs should continue to be permitted before the IPO.

10. On 28 July 2020 the IPO published a ‘call for views’. This took the form of a survey, and sought opinions about amending the AfS rules to remove the reference to the EEA. It was suggested that the proposal would apply to patents, trade marks, registered and unregistered designs. The proposal would permit AfS’s only if they are in the UK or Channel Islands (for ease, referred to as ‘UK’ below). The ‘call for views’ closed on 14 August 2020.

11. The introduction to the ‘call for views’ gave an indication of the proposal. The rules changes would apply to certain actions after the end of the TP. These include filing applications, and requests to start potentially contentious proceedings.

12. The changes would not apply to applications or actions pending before the IPO at the end of the TP, where an EEA AfS had been provided before the TP ends.

13. The changes would not apply immediately to ‘comparable rights’ ^{[footnote 2]} or re-registered designs ^{[footnote 3]} (collectively referred to as ‘comparable rights’ below). These are trade marks and designs which are on the EUIPO’s register when the TP ends, and which are transferred to the UK IPO’s register. In line with Article 55(2) of the Withdrawal Agreement, a UK AfS would not be required for these rights or designs until 3 years after the TP, even if proceedings are initiated against them.

14. The ‘call for views’ listed the rules requiring amendment as:

Rules 23 and Schedule 1 of the Design Right (Proceedings before Comptroller) Rules 1989.
Rule 103 of the Patents Rules 2007;
Rule 42 of the Registered Design Rules 2006; and
Rule 11 of the Trade Mark Rules 2008

15. It also noted the need to amend the relevant forms, most of which could be amended by means of directions.

Question 4

Responses to the ‘Call for Views’

Accepted Answer

16. The total number of responses to the ‘call for views’ was 1068.

17. The first 6 questions asked for details about the respondent and their business. Respondents were asked where all their offices were located. 96.5% had offices in the UK, 38.1% had offices in the EU or EEA, and 10.5% had offices located elsewhere in the world.

18. The vast majority (85.4%) represented their client’s IP, with 1% representing their own IP, and 4.6% representing their employer’s IP. A larger than expected number (9.1%) said they were a professional representative body.

19. Respondents were asked which areas of IP they operated in and to select all that applied. 96.3% worked in trade marks, 93.4% worked in registered designs, 84.9% worked in patents, with 83.2% working in unregistered designs.

20. Most respondents worked in micro, small and medium sized enterprises: 46.5% employing 50-249 individuals, with a further 14.6% in businesses with 11-49 employees, and 9% in businesses with 2-10 employees. 2.7% of respondents said they were the only employee. A significant minority (22.3%) worked in companies employing more than 250 people, with 2.3% preferring not to say, and 2.5% saying they didn’t know.

21. Comment: It was thought the reason for the high number saying they were a representative body was largely due to a misunderstanding of the description. On closer scrutiny, only a handful were from non-commercial bodies which represented their members, such as the chartered institutes representing IP attorneys. The IPO may need to clarify the wording of this description in future.

Question 7: How supportive are you of the general proposal to amend the AfS rules for applications to the UK IPO by removing reference to the EEA? (1068 responses)

Support	Percentage
Very supportive	92.4%
Supportive	2.8%
Neutral	1%
Not very supportive	1%
Not at all supportive	3.2%

22. Comment: It is clear from the number of responses to this consultation that the proposal has a great deal of support from individuals within the IP profession. Whilst the government notes that support, it also recognises that many of the responses were the result of a campaign, given the number of written answers which used identical texts.

23. Those who were not supportive tended to be larger multinational companies, often with in-house IP experts, who may have used representation in one non-UK location within the EEA to deal with all their intellectual property. They were concerned that the proposal would add to their costs, and could require organisational changes. Others who were not supportive were generally based outside the UK.

Question 8: Please explain your answer (931 comments)

24. Many respondents supportive of the proposals to remove the EEA from the AfS rules mentioned that they would lose business as a result of the UK’s departure from the EU, and the consequential withdrawal of their ability to represent their clients before the EUIPO. Indeed, some mentioned that this had already happened. Some felt that the proposal would help to level the playing field between their treatment at the UK IPO and EUIPO. Many also suggested that as UK representatives were likely to be more skilled in UK law and practices than their non-UK counterparts, this would also help improve the prosecution of cases, resulting in a better service for their clients, and possibly more streamlined case handling at the IPO. It would also reflect the situation in many other national IP offices - either that national AfS were required or that nationally qualified representatives only were permitted to appear before the national office. The United States and the German offices were quoted as having such requirements. Another issue mentioned was that in future, as UK law begins to diverge from that of the EU, UK representatives would naturally be better placed to deal with UK-based cases.

25. Those who were not supportive suggested that this would disadvantage UK representatives living overseas. Any proposal should not be about where someone is based, but on their nationality. A few thought that this may result in a decrease in patents filings as many international applicants use the speed of the search at the UK office to help construct international filing strategies: the additional costs associated with having an EEA and UK AfS may cause some to file elsewhere. Some also said that this didn’t address the underlying issue of representation of rights, and that the IPO should make it mandatory that an application should have a UK legally qualified representative.

26. This question was preceded by a list of rules identified by the IPO as requiring change. These are mentioned in the background section above.

27. Many suggested various different rules based largely on changing or removing the 3 year period in the Withdrawal Agreement, during which comparable rights cannot be required to have a UK AfS. Others were keen to introduce rights of representation to UK qualified only attorneys in line with the practices of national offices elsewhere such as Germany and the United States. Some suggested that the rules should be adapted to allow reciprocity with other individual national offices or to recognise those based outside the UK but with UK nationality or UK qualifications. One also suggested amending the current rules which give legal professional privilege to those on the EUIPO’s list. Other suggestions also included requiring a UK AfS for renewals, existing registrations, and other administrative actions included within the current AfS requirements. It was also suggested that PO Boxes should not be accepted as AfS. Various specific areas of IP law were also mentioned as potentially needing amendment, including section 281(5) of the Patents Act 1977 and Rule 43 of the Trade Mark Rules 2008. One person was particularly concerned about how trade mark use outside the UK should be dealt with after the TP ends. Others raised concerns about the Civil Procedure Rules.

28. Comment: The government takes the view that Article 55(2) of the Withdrawal Agreement does not permit any changes to the 3 year period itself. The government recognises the links between the amendments currently proposed and other issues raised by respondents. However, the focus of the current proposal is limited to making specific changes to the geographical area to which the current AfS rules apply. This precludes consideration of other issues at this point. The IPO is currently taking forward work on transforming its services and this work will take a fresh look at its services and how customers engage with them. In relation to the concerns about proof of use, guidance has been published which reflects Article 54(5) of the Withdrawal Agreement ^{[footnote 4]}.

Question 10: Overall, what impact do you believe the change to AfS rules will have on your business? (1068 responses)

Impact	Percentage
Very positive	71.9%
Positive	19.9%
No impact	2.8%
Negative	1.9%
Very negative	1.9%
I don’t know	1.6%

Question 11: Please explain your answer (835 comments).

29. Many expected the impact of the proposed change to result in an increase in work. This would (partially) offset the loss of work before the EUIPO. Some mentioned that they had already seen a negative impact, as clients or non-UK firms anticipated the post-TP changes at the EUIPO. Of those, many were smaller firms, and others in larger firms also expected the impact on smaller firms to be greatest. Nevertheless, the impact of the proposal was expected to boost business income. This in turn could have wider positive benefits, such as increasing tax revenue, and benefiting the UK economy more generally.

30. Many also responded to this question by suggesting that the proposal would have a positive effect on the way proceedings were conducted. It would help streamline actions in the UK as UK attorneys would generally have a better knowledge of UK laws and procedures, including the servicing of legal documentation. This could result in an improved service to clients.

31. Some thought that the change in the AfS rules would be beneficial as it would create a platform for reciprocity between UK and EEA agents to act for each other in their respective regions. It was also thought that it would help retain existing international work: if an international company required registered rights in the UK it would need to have a UK AfS, and would therefore not transfer the whole of its existing portfolio, currently handled in the UK, to an EEA attorney.

32. Those who responded negatively to the proposal said that it would increase costs to clients as they would be required to work through both UK and EEA attorneys. Some thought it might reduce the likelihood of UK patent filings, as the UK IPO is often used given quality of search report to help early identification of any problems.

33. Suggestions were also made to ensure registrations were included in the changes, and to extend provisions to those living outside the UK who are UK qualified. As with the answers provided in reply to other questions some also suggested ensuring rights of representation were introduced, for UK attorneys only.

34. Comment: The suggestions raised above were often mentioned in the answer to several questions. Please see the comments in paragraph 28.

Question 12: ‘The AfS changes will not apply to ongoing applications or requests which were filed or have been made before the changes come into force. If you currently have ongoing cases with a non-UK AfS, how many are you likely to change to a UK address? (1,068 responses)

35. About 5.4% of respondents said they would be likely to change the AfS on pending cases across patents, trade marks and designs. On average, 25 individuals per right suggested that they would change more than 100 cases each.

36. Comment: A broad analysis of the figures was carried out. This was based on the number of respondents selecting how many cases they were likely to change (according to a spread of cases e.g. 1-10, 11-20) and taking the mid-point of the spread of cases (except for the 100+ category where 100 was used). According to this conservative estimate, the IPO could receive more than 9,000 requests to action changes in AfS which would not be required by the new legislation. While it is understandable that representatives might wish to do so, it would create additional strains on the IPO in what is likely to prove to be a very busy period immediately after the end of the TP.

Question 13: What transitional provisions do you believe should be included? (586)

37. Various suggestions were made around the 3 year period written into the Withdrawal Agreement during which ‘holders’ of comparable rights cannot be required to provide a UK AfS. Suggestions varied from not recognising the 3 year period at all, to permitting another 6-12 months after the end of that period for a UK AfS to be filed, to requiring a UK AfS on renewal. Suggestions were also made about notifying comparable rights holders of the change at various points within the 3 year period – or after it. Quite a few respondents suggested a UK AfS should be required if comparable rights are involved in contentious proceedings, even during the 3 year period. A couple suggested that Article 55(2) would not prevent this. Several suggested that there should be reciprocity between the UK and the EU, so that the same rules applied at the EUIPO and the UK IPO. Others suggested this proposal was too early and wanted to wait for a trade agreement to be reached. Again, many suggested that UK attorneys only should have rights of representation before the UK IPO.

38. Comment: The government takes the view that Article 55(2) of the Withdrawal Agreement does not permit the UK to require UK AfS for comparable rights during the 3 year period after the end of the TP, whether during contentious proceedings or not. Nor does it permit any changes to the 3 year period itself. The IPO does not currently envisage the introduction of notifications to holders of comparable rights of the need to provide a UK AfS at the end of that 3 year period. However, the IPO is working to transform the electronic processing of applications and registrations in the future. It is possible that this may be considered as that work is taken forward. It is not possible to consider reciprocity at this stage in the UK’s withdrawal from the EU, as indicated by the guidance ^{[footnote 5]} published by the EUIPO on how it will implement the Withdrawal Agreement. Representation issues are outside the scope of this current proposal.

Question 14 asked about the rules on handling international objections (444 responses)

39. The vast majority of respondents would like to move to a UK AfS but only if an objection is raised by IPO.

40. Comment: This is in keeping with current practice relating to international registrations of trade marks and designs under the Madrid and Hague Agreements. This means that the IPO allows non-EU/EEA AfS on acceptable registrations which designate the UK. Where deficiencies are raised in relation to these international registrations or they or protected rights are subject to attack, a UK AfS will be required. The IPO does not intend to change current practice in relation to these rights. For new Patent Cooperation Treaty (PCT) applications filed at the UK IPO an address for service in the UK or Channel Islands will be required.

Question 15: ‘In the longer term, we are considering updating our forms to ensure they all include an explicit request for a contact email address. This would potentially allow us to further correspond electronically. Do you believe the provision of a contact e-mail address should be a statutory requirement?’ (1068 responses)

Response	Percentage
Yes	55.1%
No	16.%
Don’t know	28.9%

Question 16: Please explain your answer (739 comments)

41. Both those who supported and did not support the suggestion of a mandatory e-mail address raised concerns about the practicalities. For example, even if e-mail addresses were mandatory for all actions, should the e-mail address be on the register or otherwise publicly available? It was thought that a publicly available e-mail address was useful for approaching potential defendants in litigation. It could lead to more prompt exchanges between parties. However, it could also lead to an increase in phishing and other scam-related activity.

42. Some raised concerns as to whether e-mail contacts might undermine the AfS rules changes to require a UK AfS, and others suggested restricting e-mails to UK addresses only. Some questioned the reliability of e-mail accounts: there was a greater likelihood of e-mails changing, relative to changes in physical addresses - although others took the opposite view. The suggestion was also made that generic or departmental e-mails addresses should be required, rather than those personal to individuals. Others took the view that more generic e-mail addresses could lead to situations where important deadlines were missed.

43. Some respondents suggested that e-mail addresses should be mandatory for representatives, who were more likely to have the necessary infrastructure in place to monitor incoming e-mails. They would also be more likely to ensure that changes in personnel did not disrupt communications. This was less likely to be the case for those who were representing themselves or their company. Others suggested that the use of e-mail accounts was not the best way of communicating electronically with representatives: a system which could be integrated with other existing systems, perhaps a portal, was preferable.

44. Others suggested that this issue was rather more complex than the straight forward question in this ‘call for views’ implied. The issues needed broader consideration and to be consulted on in greater detail.

45. Comment: As indicated by the original question, the issue of using e-mail addresses - or other forms of e-communications is one the IPO is likely to be considering in the future. This will be alongside the work it is doing to transform the electronic delivery of its services. The issues raised by respondents will be useful in helping to steer that work. However, in the meantime, the IPO may add requests for e-mail addresses to specific forms as the need arises. It will not be mandatory to give such information at this time.

Question 17: When patents granted by the European Patent Office (EPO) are designated in the UK, the IPO currently defaults the AfS to that of the patent owner’s address as opposed to the EPO representative address. To what extent do you agree that the address for service, for European patents (EP), should remain as the representative registered at the EPO? (907 responses)

Response	Number of responses
Agree	274
Somewhat agree	100
I don’t know	380
Disagree	123
Somewhat disagree	30

46. Of those who responded with a view, 71% agreed or somewhat agreed with the proposal. Most of those who responded ‘I don’t know’ said that they didn’t manage patents, so didn’t feel able to express an opinion.

Question 18: Please explain your answer. (431 comments)

47. Those who supported the change suggested the IPO’s current practice of changing the address for service to the patent holder could create unnecessary work. The patent holder would not necessarily understand why they were receiving communications, may fail to recognise the significance of it, and/or regard it as a scam. It was therefore possible that important communications would be ignored, and the legal representative would then have to untangle any problems.

48. Many who did not support the potential change wanted a UK AfS to be a requirement, in line with the proposal on AfS more generally. Others referenced the lack of mandate for acting before the UK IPO that EPO AfS may have. Some also thought that the change would mean a loss of business to the UK.

49. Comment: It is unlikely that a change to the IPO’s current practice of removing the EPO AfS to change it to the details of the patent holder would, of itself, result in any significant reduction in business to the UK. The EPO AfS of many of these patents is simply reinstated, with the proper mandate, when the patent becomes a UK national right.

50. The existing patent AfS rules cover a broad range of actions, including for example, ‘applications’ (not just those for the grant of a patent), ‘references’ or ‘requests’. The proposed amendments to the AfS requirements do not seek to change the types of actions to which the AfS rules apply, so - as now - the AfS rules will apply to the filing of mandates to appoint attorneys. Given the proposed limitation to the geographical area for permitted AfS, it is therefore not appropriate to pursue the proposal on the change to the handling of EP patents.

Question 19: ‘Do you have any further comments on this proposal?’ (425 responses)

51. Given the overwhelming support for the AfS proposal many comments in response to this question re-iterated that support. Many requested timely confirmation of the changes to the AfS rules, for various reasons including certainty and early warning for clients and representatives, and that UK-based representatives were best placed to detect and warn against scams given their knowledge of IP communication systems. Many took the opportunity to mention the need to have UK representatives. This would ensure the quality of service. UK practitioners would be best placed to maintain knowledge of the UK IP system, especially in the future, as it potentially diverges from that of the EU.

Government response to call for views on Address for Service (AfS)

Executive summary