Statutory guidance

E-directions for common renewals service

Published 21 April 2021

Introduction

1. The comptroller has given the following directions under section 124A of the Patents Act 1977, section 37A of the Registered Designs Act 1949 and rule 78 of the Trade Marks Rules 2008 to direct the form and manner in which patents, designs and trade marks in force in the UK may be renewed in electronic form by using electronic communications.

Interpretation

2. In these directions:

‘the Patents Act’ means the Patents Act 1977 (as amended);

‘the Trade Marks Act’ means the Trade Marks Act 1994 (as amended);

‘the Designs Act’ means the Registered Designs Act 1949 (as amended);

‘additional late renewal fee’ means any additional fee for late renewal prescribed for patents under rule 5 of the Patent Fees Rules and listed at Schedule 2 Part 2 to those Rules, for Designs under rule 6 of the Designs Fees Rules and listed in Part 2 of the Schedule to those Rules and for Trade Marks under rule 2 of the Trade Marks Fees Rules and listed in the Schedule to those Rules;

‘the Patent Fees Rules’ mean the Patents (Fees) Rules 2007 (as amended);

‘the Trade Marks Fees Rules’ means the Trade Marks (Fees) Rules 2008 (as amended);

‘the Designs Fees Rules’ means the Registered Designs (Fees) Rules 2016 (as amended);

‘the Office’ means the UK Intellectual Property Office or, where appropriate, the comptroller;

‘online’, in relation to a document or message being delivered, refers to a document or message that has been transmitted from one device to another by means of an electronic communications network (within the meaning of section 32 of the Communications Act 2003);

‘patent’ means a patent which is granted and in force in the UK, that is to say, a UK patent or a European Patent (UK);

‘design’ means a registered design which is in force in the UK;

‘trade mark’ means a trade mark which is registered and in force in the UK;

‘register’ means the Register of Patents kept under section 32 of the Patents Act; the Register of Trade Marks kept under section 63 of the Trade Marks Act and the Register of Designs kept under section 17 of the Designs Act;

‘renewal fee’ means the fee needed to renew a patent, trade mark or design.

• for patents this is governed by section 25(3) of the Patents Act and rule 36 of the Rules and prescribed under rule 4 of the Patent Fees Rules and listed at Schedule 2 Part 1 to those Rules.
• for trade marks this is governed by section 43(1) of the Trade Marks Act and prescribed under rule 2 of the Trade Mark Fees Rules and listed in the Schedule to those Rules.
• for designs this is governed by section 8(2) of the Designs Act and prescribed under rule 6 of the Designs Fees Rules and listed at the Schedule to those Rules;

‘renewal period’ refers to the period(s) specified by rules 37(1) and (2) and 38 of the Patents Rules, the period specified by rule 35 of the Trade Marks Rules and the period specified by rule 12(2) of the Designs Rules;

‘request’ means a request to renew a patent, design or trade mark;

‘requester’ means a person making the request;

‘the Patent Rules’ mean the Patents Rules 2007 (as amended);

‘the Trade Marks Rules’ mean the Trade Marks Rules 2008 (as amended);

‘the Designs Rules’ mean the Registered Designs Rules 2006 (as amended);

‘start page’ means the launch page of the web interface;

‘web interface’ means the Office’s dedicated web page for filing electronic renewal requests.

Online renewal requests

5. These directions come into force on 23/04/2021.

6. Patent, design or trade mark renewals may be requested via the web interface at any time.

7. If an electronic request to renew a patent, design or trade mark is delivered to the office in a form or a manner which does not comply with these directions, the Office may treat the request as not having been delivered, and the renewal fee as not having been paid. The patent in question will cease to have effect under section 25(3) of the Patents Act subject to the period set out under section 25(4) of the Patents Act. The trade mark in question will cease to have effect under section 43(5) of the Trade Marks Act subject to the period set out under section 43(3) of the Trade Marks Act. The design in question will cease to have effect under section 8(3) of the Designs Act subject to the period set out under section 8(4) of the Designs Act.

8. A request to renew a patent, design or trade mark must be accompanied by an email address to which an email acknowledging receipt of the renewal request(s) can be sent. Requests containing an incorrect email address may be treated as not having been delivered to the Office.

9. Requests using the file upload option must be uploaded in CSV format. Requests using other file formats may be treated as not having been delivered to the office.

Payment of fees

10. Renewal fees and, where due, additional late renewal fees must be paid via the web interface at the time the request is made. Failure to pay all the fees due may result in the request being treated as not having been received.

11. Renewal fees payable with the request must be paid in Sterling using the payment methods listed on the start page for the service.

12. Where an online payment is rejected, the request will be treated as not having been received.

Acknowledgment and time of delivery

13. Where a request has been received, the Office will issue an email from which the requester can download their payment receipt and certificate(s) of renewal. The email will specify the time and date of the request. If more than one patent, design or trade mark is renewed, only the first patent, trade mark or design number is listed in the email. Instead, a downloadable link in the email will contain each certificate. The requester should not assume a renewal payment has been accepted until receipt of this email. If payment is taken from a deposit account held by the Office, email notification will also be sent to the address associated with that account.

Reminders and renewal notices

14. Reminders for future renewal payments, if requested, will be sent to the email address provided. For patents, if payment is not made within the renewal period, a renewal notice will be sent to the address for service, or if present, a specific email or postal address requested by the requestor for handling renewal payments.

15. Any request under rule 39(3)(a) of the Patent Rules that the next renewal notice is to be sent to an address other than the address for service entered in the register cannot be filed using the web interface. Any online communication to this effect shall be treated as not having been delivered irrespective of whether a request to renew the patent has been accepted or entered onto the register.

Julyan Elbro
Divisional Director - Patent Examination
20 April 2021