UKIPO announces post-Brexit UK address for service
Only applicants with a UK or Channel Island “address for service” will be accepted for new applications and requests to start contentious proceedings before the UK Intellectual Property Office (IPO), starting January 1.
The change was announced in a published government response, in which the IPO confirmed the decision was an outcome of the “address for service call for views” launched earlier this year, in which views were invited on removing references to the European Economic Area on applications.
The consultation invited responses from IP attorneys, and organisations representing attorneys. Of the 1,068 respondents to the calls for views, 95% supported the proposal to move to a UK address for service. Those who were not in favour tended to be based outside the UK or were typically larger multinational companies, said the IPO.
The changes will apply to new applications for patents, trademarks and designs from the start of next year, and will include proceedings relating to unregistered designs. It will not apply to actions lodged with the IPO before the end of the Brexit transition period, due to end on December 31.
Tim Moss, CEO of the IPO, said: “Now that the UK has left the European Union it’s right that we will be putting in place new legislation so that only a UK address for service will be accepted before the IPO.
“I am confident that these changes will help to establish more of a level playing field for the UK, reflecting our new status as an independent nation from 1 January.”
The change in requirements will primarily affect non-UK applicants for trademarks, designs and patents, as these are less likely to be using a UK address for service already, according to the IPO.
More detailed business guidance will be published in due course before the end of the transition period to allow businesses to prepare. More information about the responses can be found on the IPO address for service page.
Commenting on the decision, the president of The Chartered Institute of Trade Mark Attorneys, Richard Goddard, said:
“This will be a positive change and will help protect the UK’s world-leading IP environment, those who work within it and the businesses who rely on the expertise of UK IP legal professionals.
“It is in the interests of IP owners with UK rights to have a qualified professional who is familiar with UK law and practice advising them.
“The strength of feeling on this issue is clear to see from the significant majority who were in favour of this change. I am delighted that the government is acting decisively on this. Thank you to the Minister for IP and the IPO for listening and taking steps towards levelling the playing field.
“We urge the government to ensure there is sufficient parliamentary time to guarantee the rules are in force for January 1 2021.”
Earlier this year, Moss discussed the impact of Brexit on IP in an exclusive interview with LSPN Connect. To find out more, and to view the session, visit here.
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