Patents Trade Marks Designs

Address for Service Rule to Change at the UK Intellectual Property Office

November 26, 2020

On 19 November 2020 the government published its response to a ‘call for views’ on a proposal to amend the UK Intellectual Property Office’s (UKIPO) rules governing an address for service.

The current rules state that a correspondence address or an address for service must be included in an application for a patent, trade mark or design and that the correspondence address or address for service must be within the UK, European Economic Area (EEA) or Channel Islands.

At the end of the Transition Period (TP) relating to the UK’s exit from the EU, UK intellectual property representatives will no longer have rights of representation before the EU Intellectual Property Office (EUIPO). This would mean that if the EEA address for services continue to be permitted before the UKIPO then an imbalance between the positions of UK and EU IP professionals would be created.

On 28 July 2020 the UKIPO published a survey called ‘call for views’ regarding opinions on whether the address for service rules should be amended to remove the reference to the EEA.

Based on overwhelming support for the proposed change, the government is now taking forward the necessary legislative changes to amend the address for service rules to remove the reference to the EEA and intends for these rules to come into force on 1 January 2021.

The amended rules will apply to such actions as new applications, new oppositions and to any other proceedings already covered by the existing address for service rules, which are instigated after the end of the TP. A UK address for service will not be required if the only action is for the renewal of registered or granted rights, in line with the treatment of renewals under the existing rules.