Statutory guidance

Guidance and notes on changes to patents, trade marks and designs forms made in relation to the end of the fee reduction period

Published 31 March 2021

(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.

(e) The Patents, Trade Marks and Registered Designs (Fees) (Coronavirus) (Amendment) Rules 2020 Statutory Instrument (SI) ends on 1 April 2021. This SI acted to reduce some patent, trade mark and designs fees from 30 July 2020 until 31 March 2021. From the 1 April these fee reductions will no longer apply. Hence these forms have been revised to reflect these fee changes.

Trade marks forms TM9, TM9R, TM11, TM13

(f) Trade marks forms TM9, TM9R, TM11, TM13 have been revised to make the checklist box consistent with the other trade marks forms, with the addition/replacement of the checklist box stating: “Checklist Please make sure you have remembered to: Provide the trade mark number(s); Sign and date the form”.

(g) Trade marks forms TM9 and TM9R have been revised to include the text “Fee £100” in the top left underneath the form title and a fee and payment sheet has been added as the final sheet of these forms.

(h) Trade marks form TM11 has been revised such that the text in box 7 under ‘Late renewal fees’ which states “The relevant fee (if any) must be paid if you are renewing up to six months after the renewal date” has been replaced with “£50 additional fee must be paid if you are renewing up to six months after the renewal date”.

(i) Trade marks form TM13 has been revised such that the text in box 6 under ‘Restoration fee’ which states “Relevant fee (if any)” has been replaced with “£100” and in the ‘Restoration Fee’ box the “£” has been replaced with “£100”.

Patent Forms PF3, PF14, PF16, PF21, PF51, PF52

(j) Patent forms PF14, PF16, PF52 have been revised to include a fee and payment sheet as the final sheet of these forms.

(k) Patents form PF3 has been revised to include the text “We will only process this form with this section complete (one form per payment)” to the top of the fee and payment sheet.

(l) Patents form PF21 has been revised to clarify wording in box 6 by replacing “An “Address for service” in the United Kingdom, Gibraltar or the Channel Islands to which all correspondence should be sent. (see note (g): (including postcode)” to “Name of your agent (if you have one) Address for Service’ in the United Kingdom, Gibraltar or the Channel Islands to which all correspondence should be sent. (see note (g))”

(m) Patents form PF51 has been revised to clarify wording in box 4 by replacing “‘Address for service to which all correspondence should be sent (including postcode). This may be in the United Kingdom, Gibraltar or the Channel Islands. (see note (e))” with “Address for service (including postcode) in the United Kingdom, Gibraltar or the Channel Islands to which all correspondence should be sent. (see note (e)).”

Design forms DF9A, DF29

(n) Design form DF9A has been revised such that the text in box 5 which states “Amount of late renewal fee (if any). (If you are renewing up to six months after the renewal date.)” has been replaced with “Amount of late renewal fee. (You must pay this if you are renewing up to six months after the renewal date.)”. Text has also been added to the top right corner stating ‘renew online for faster payment’ including an associated hyperlink below the text.

(o) Design form DF29 has been revised to add the text “Official fee due with this form” in the top left underneath the form title and a fee and payment sheet has been added as the final sheet of this form.

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

(q) 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 811433