December 7, 2020

Important change in practice update - address for service (AFS) for IP rights in the UK

Following on from our recent Brexit update, from 1 January 2021, the UKIPO has announced that an address for service in the UK (or Gibraltar or the Channel Islands) will need to be provided when

  • Filing new applications - filing new applications for UK patents, trade marks and designs at the UKIPO. This includes UK trade mark and design applications that will be filed at the UKIPO based on EU applications pending at the EUIPO on 1 January 2021
  • Challenging and Defending Rights: new contentious proceedings
  • European Patents: when initiating new proceedings for existing IP rights, for example, when registering an address for service for the UK validation at the UKIPO based on a granted European patent.

Thus, from 1 January 2021, an address for service within the European Economic Area (EEA) will no longer be accepted by UKIPO.

Exception 1: Importantly, the new rules will not apply to applications or proceedings already pending at UKIPO.

Exception 2: For “cloned” UK rights derived from granted EU trade mark and design rights, that will be created on 1 January 2021, these changes will not apply initially.  Accordingly, all UK comparable (i.e. “cloned”) trade mark and design rights that will be automatically created on 1 January 2021 will not be required to have a UK address for service for three years following the end of the transition period i.e. up to 31 December 2023.

Hanna Moore + Curley has offices in the United Kingdom as well as in the European Union, and are well placed to directly represent clients before the UKIPO, EUIPO and EPO. We can also represent clients before the Community Plant Variety Rights Office (CPVO) and Intellectual Property Office of Ireland (IPOI).

Please contact us if you have any queries or concerns with regard to the changes in the address for service rules of the UKIPO, how this may impact your patent portfolio and what further steps need to be taken.

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