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 28 June 2022

Changes to patents, trade marks, and designs forms made to allow for more efficient processing

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.

3. These Directions come into force on 29th June 2022.

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:

Design forms

• Designs form DC1 (Confirmation of convention country priority claim)
  
• Designs form DF1A (Appointment or change of agent or contact address)
  
• Designs form DF2A (Application to register one or more designs)
  
• Designs form DF2B (Application to register designs divided from an earlier application)
  
• Designs form DF2C (Application to register a design which registration was deferred)
  
• Designs form DF5 (Request for a statement of reasons for registrar’s decision)
  
• Designs form DF9A (Renewal of design registration)
  
• Designs form DF12A (Record/cancel a change of ownership, licence or security)
  
• Designs form DF16A (Change of proprietor’s name or address)
  
• Designs form DF19A (Request to invalidate a design registration)
  
• Designs form DF19B (Notice of counter-statement)
  
• Designs form DF19C (Notice by proprietor to cancel a registration)
  
• Designs form DF21 (Request for a search of the UK designs register)
  
• Designs form DF23 (Request for a certified copy)
  
• Designs form DF29 (Request to restore a registration)
  
• Designs form DF55 (Notice of appeal to the appointed person)
  
• Designs form DRF55 (Notice of appeal to the appointed person - unregistered design right)
• Design Right form DRF1 (Reference of dispute to Comptroller)
  
• Design Right form DRF2 (Application to be made a party to proceedings)
  
• Design Right form DRF3 (Apply to settly/adjust licence of right terms per August 1989)
  
• Design Right form DRF4 (Vary licence of right terms by design right or copyright owner)
  
• Designs form Designs opt out (Opt out of holding a re-registered design)
  
• Designs form International designs opt out (Opt out of holding a re-registered design (former International registration))
  

Patent forms

• Patents form AF1 (Pay the application fee if it has not already been paid with Form 1 or Form 9A)
  
• Patents form 1 (Request for grant of a patent)
  
• Patents form 2 (Initiation of proceedings before the Comptroller)
  
• Patents form 3 (Late additions and declarations of priority)
  
• Patents form 4 (Continuation of proceedings before the Comptroller)
  
• Patents form 7 (Statement of inventorship and of right to grant of a patent)
  
• Patents form 8 (Request for authorisation of the release of sample biological material)
  
• Patents form 8A (Notice of intention to restrict samples of biological material)
  
• Patents form 9A (Request a search – International applications only, Request a search for a UK application and Request a further or supplementary search under section 17(6) or section 17(8)
  
• Patents form 10 (Request for a substantive examination)
  
• Patents form 12 (Payment of renewal fee)
  
• Patents form 14 (Request to reinstate a patent application)
  
• 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 licenses are available as of right)
  
• Patents form 30 (Cancel entry in register that licences under the patent are available as of right)
  
• Patents form 34 (Grant fee for patent application)
  
• Patents form 49 (Request to be informed of future events relating to a patent application or patent)
  
• Patents form 51 (Appointment or change of agent or attorney)
  
• Patents form 52 (Request to extend a prescribed time limit)
  
• 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 SP2 (Payment of annual fees (and additional fee for late payment))
  
• 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)
  
• Patents form SP5 (Notification under the Supplementary Protection Certificate ‘manufacturing waiver’)
  
• Patents form SP6 (Notification of marketing authorisation(s) granted after submission of an application for a Supplementary Protection Certificate)

Trade marks forms

• Trade marks form TM3 (Application to register a trade mark)
  
• Trade marks form TM3A (Request to amend the appropriate class)
  
• Trade marks form TM4 (Application to transform a Madrid Protocol Designation)
  
• Trade marks form TM5 (Request for a statement of reasons for registrar’s decision)
  
• Trade marks form TM7 (Notice of opposition and statement of grounds)
  
• Trade marks form TM7F (Notice of FAST TRACK opposition and statement of grounds)
  
• Trade marks form TM7G (Request to add grounds to a notice of opposition)
  
• Trade marks form TM8 (Notice of defence and counterstatement)
  
• Trade marks form TM8N (Notice of defence for the use in revocation on the grounds on non-use)
  
• Trade marks form TM9 (Request for an extension of time before the period has expired)
  
• 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 a cooling off period)
  
• Trade marks form TM11 (Renewal of trade mark registration, Renewal additional class, Renewal late payment)
  
• Trade marks form TM12 (Request to divide an application)
  
• Trade marks form TM12R (Request a divide a registered trade mark)
  
• Trade marks form TM13 (Request to restore and renew a registration)
  
• Trade marks form TM16 (Application to record a change of ownership)
  
• Trade marks form TM16P (Application to record partial assignment of goods and/or services)
  
• Trade marks form TM17 (Request to merge registrations)
  
• Trade marks form TM21A (Change of owner’s name, address or email)
  
• Trade marks form TM21B (Change of details to an application)
  
• Trade marks form TM22 (Notice to surrender a registration)
  
• Trade marks form TM23 (Notice to partially surrender a registration)
  
• Trade marks form TM24 (Application to record or amend a security interest)
  
• Trade marks form TM24C (Application to cancel a security interest)
  
• Trade marks form TM26(I) (Application to declare invalidation)
  
• Trade marks form TM26(N) (Application to revoke a trade mark for reasons of non-use)
  
• Trade marks form TM26(O) (Application to revoke a trade mark for reasons 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 of application; revocation; invalidation or registration)
  
• Trade marks form TM31C (Request for information about events relating to a UK trade mark)
  
• Trade marks form TM31M (Request for event information relating to international trade mark (UK))
  
• Trade marks form TM31R (request for a certified copy)
  
• Trade marks form TM33 (Appointment or change of representative for TM owner)
  
• Trade marks form TM33P (Appointment or change of representative for opponents)
  
• Trade marks form TM35 (Regulations governing the use of certification or collective marks)
  
• Trade marks form TM36 (Application to amend the regulations governing the use of marks)
  
• Trade marks form TM50 (Application to record a licensee)
  
• Trade marks form TM51 (Application to remove or amend the recordal of 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))
  
• Trade marks form Trade marks opt out (Opt out of holding a comparable Trade Mark)
  
• Trade marks form International trade marks opt out (Opt out of holding a comparable Trade mark (former International registration)
  

5. Patents forms 1, 2, 3, 4, 7, 9A, 10, 12, 14, 15, 16, 17, 21, 23, 34, 49, 52, NP1, SP1, SP2, SP3, SP4, AF1, trade marks forms TM3, TM3A, TM5, TM7, TM7F, TM7G, TM9, TM9R, TM11, TM12, TM13, TM16, TM16P, TM24, TM24C, TM26(I), TM26(N), TM26(O), TM31C, TM31M, TM31R, TM35, TM36, TM50, TM51, TM55P, designs forms DF2A, DF2B, DF2C, DF9A, DF12A, DF16A, DF19A, DF19C, DF21, DF23, DF29 and design right forms DRF1, DRF2, DRF3, DRF4 as so set out, replace the corresponding forms in the Schedule to the Directions made on 18 August 2021 (which came into force on 21 August 2021). The Directions made on 18 August 2021 are, to that extent, revoked.

6. Patents form 51 as so set out, replaces the corresponding form in the Schedule to the Directions made on 31 March 2021 (which came into force on 1 April 2021). The Directions made on 31 March 2021 are, to that extent, revoked.

7. Patents forms 8, 20, 28, 30, 54, SP5, SP6, trade marks forms TM4, TM8, TM8N, TM9C, TM9E, TM9T, TM17, TM21B, TM26R, TM27, TM28, TM29, TM33, TM33P, TM53, TM55, Trade marks opt out, International trade marks opt out, and designs forms DF5, DF55, Designs opt out, International designs opt out as so set out, replace the corresponding forms in the Schedule to the Directions made on 22 December 2020 (which came into force on 1 January 2021). The Directions made on 22 December 2020 are, to that extent, revoked.

8. Designs form DF1A as so set out, replaces the corresponding form in the Schedule to the Directions made on 6 November 2020 (which came into force on 9 November 2020). The Directions made on 6 November 2020 are, to that extent, revoked.

9. Trade marks form TM12R as so set out, replaces the corresponding form in the Schedule to the Directions made on 13 February 2019 (which came into force on 14 January 2019). The Directions made on 13 February 2019 are, to that extent, revoked.

10. Designs forms DF5 and DF19B as so set out, replace the corresponding forms in the Schedule to the Directions made on 23 May 2018 (which came into force on 13 June 2018). The Directions made on 23 May 2018 are, to that extent, revoked.

11. The remaining trademark and designs forms as so set out, replace the corresponding forms.

Julyan Elbro
Acting on behalf of the Comptroller
28 June 2022