Statutory guidance

Directions under section 31A of the Registered Designs Act 1949, section 123(2A) of the Patents Act 1977 and section 66 of the Trade Marks Act 1994

Published 22 December 2020

1. The comptroller has made these Directions under section 31A of the Registered Designs Act 1949, section 123(2A) of the Patents Act 1977 and section 66 of the Trade Marks Act 1994.

2. These Directions set out changes to the below Designs Forms, Patents Forms and Trade Marks Forms whose use is required by rules. These Directions also introduce Patents Forms SP5, SP6, Trade Marks Forms Trade marks opt out, International trade marks opt out and Designs Forms Designs opt out, International designs opt out, whose use is required by rules.

3. These Directions come into force on 1 January 2021.

4. The following forms are set out in the Schedule to these Directions and are the forms which are required by the Registered Designs Rules 2006 (SI 2006/1975) as amended, the Patents Rules 2007(SI 2007/3291) as amended and the Trade Marks Rules 2008 (SI 2008/1797) as amended:

• Patents Form 1 (Request for grant of a patent)
• Patents Form 2 (Initiation of proceedings before the Comptroller)
• Patents Form 4 (Continuation of proceedings before the Comptroller)
• Patents Form 8 (Request for authorisation of the release of sample biological material)
• Patents Form 15 (Notice of opposition to proceedings before the Comptroller)
• Patents Form 16 (Application to restore a patent)
• Patents Form 17 (Request for opinion as to the validity or infringement of a patent)
• Patents Form 20 (Request to correct a name or address)
• Patents Form 21 (Application to register or give notice of rights)
• Patents Form 23 (Request for a copy of a document or a register entry)
• Patents Form 28 (Apply for a patent register entry to show licences are available as of right)
• Patents Form 30 (Cancel entry in register that licences under the patent are available as of right)
• Patents Form 51 (Appointment or change of agent or attorney)
• Patents Form 54 (Filing a translation in connection with a European patent or a European patent application)
• Patents Form NP1 (National processing of international patent (UK) application)
• Patents Form SP1 (Application for grant of a supplementary protection certificate)
• Patents Form SP3 (Application for declaration of lapse or invalidity, or to revoke an extension of the duration of an SPC)

• Patents Form SP4 (Application to extend a supplementary protection certificate)

• Designs Form DF2A (Apply to register one or more designs)
• Designs Form DF2C (Application to register a design which registration was deferred)
• Designs Form DF5 (Statement of reasons for registrar’s decision)

• Designs Form DF55 (Notice of appeal to the appointed person)

• Trade Marks Form TM3 (Application to register a trade mark)
• Trade Marks Form TM4 (Application to transform a Madrid Protocol)
• Trade Marks Form TM5 (Request for a statement of reasons)
• Trade Marks Form TM7 (Notice of opposition)
• Trade Marks Form TM7F (Notice of fast track opposition)
• Trade Marks Form TM8 (Notice of defence)
• Trade Marks Form TM8N (Notice of defence on the grounds of non use)
• Trade Marks Form TM9 (Request an extension of time)
• Trade Marks Form TM9C (Request for a cooling off period)
• Trade Marks Form TM9E (Request for an extension to cooling off period)
• Trade Marks Form TM9R (Request for a retrospective extension of time)
• Trade Marks Form TM9T (Request to terminate cooling off period)
• Trade Marks Form TM12 (Request to divide an application)
• Trade Marks Form TM16 (Application to record a change of ownership)
• Trade Marks Form TM16P (Application to record partial assignment)
• Trade Marks Form TM17 (Request to merge registrations)
• Trade Marks Form TM21B (Change of details to an application)
• Trade Marks Form TM26(I) (Application to declare invalidation)
• Trade Marks Form TM26(N) (Application to revoke a trade mark for non-use)
• Trade Marks Form TM26(O) (Application to revoke a trade mark other than non-use)
• Trade Marks Form TM26R (Application to rectify the register)
• Trade Marks Form TM27 (Application to intervene in proceedings)
• Trade Marks Form TM28 (Application to record a concurrent registration)
• Trade Marks Form TM29 (Application to set aside cancellation)
• Trade Marks Form TM33 (Change of representative)
• Trade Marks Form TM33P (Change of representative (opponents and cancellations)
• Trade Marks Form TM35 (Regulations governing the use of certification or collective marks)
• Trade Marks Form TM36 (Application to amend the regulations)
• Trade Marks Form TM50 (Application to record a licensee)
• Trade Marks Form TM51 (Application to remove or amend a licence)
• Trade Marks Form TM53 (Request to proceed to evidence rounds)
• Trade Marks Form TM55 (Notice of appeal to the Appointed Person (ex parte))
• Trade Marks Form TM55P (Notice of Appeal to the Appointed Person (inter parte))

5. Patent Forms 1, 21, 23, 51 and Trade Marks Forms 7, 16, 26(I), 33 as so set out, replace the corresponding forms in the Schedule to the Directions made on 2 November 2020 (which came into force on 9 November 2020). The Directions made on 2 November 2020 are, to that extent, revoked.

6. Patents Forms 2, 4, 15, 17, NP1, SP1, SP2, SP3, SP4, Designs Forms 2A, 2C and Trade Marks Forms 3, 5, 7F, 12, 16P, 26(N), 26(O), 35, 36, 50, 51, 55P as so set out, replace the corresponding Forms in the Schedule to the Directions made on 24 September 2020 (which came into force on 1 October 2020). The Directions made on 24 September 2020 are, to that extent, revoked.

7. Trade Marks Forms 9 and 9R as so set out, replace the corresponding Forms in the Schedule to the Directions made on 28 July 2020 (which came into force on 30 July 2020). The Directions made on 28 July 2020 are, to that extent, revoked.

8. The remaining Patent Forms, as so set out, replace the corresponding forms in the Schedule to the Directions made on 15 May 2018 (which came into force on 25 May 2018). The Directions made on 15 May 2018 are, to that extent, revoked.

9. The remaining Trade Marks and Designs Forms as so set out, replace the corresponding Forms.

10. New Patents Forms SP5, SP6, Trade Marks Forms Trade marks opt out, International trade marks opt out and Designs Forms Designs opt out, International designs opt out, are introduced in the Schedule to the Directions which come into force on 1 January 2020.

James Porter
(Acting) Divisional Director, Policy and Legal
Acting on behalf of the Comptroller
21 December 2020