Response on proposed changes to the Address for Service rules

Set out below is CIPA’s response to the UK Intellectual Property Office consultation on proposed changes to the Address for Service (AfS) rules.

The changes would remove the reference to the European Economic Area. This means that only UK or Channel Island AfSs will be accepted. The changes would apply to new applications for patents, trade marks and designs and requests for hearings as well as requests to start potentially contentious proceedings. Proceedings relating to unregistered designs are also included. See more here.

When the Transition Period ends on 31 December 2020, UK representatives will no longer be able to act before the EUIPO. How supportive are you of the general proposal to amend the AfS rules for applications to the IPO by removing reference to the EEA?

Very supportive. We support the general proposal, for all registered rights. However, some of our members suggest consideration should be given to offering reciprocal AfS rights to EEA member states which allow representation by UK representatives in their national IP offices.

This should only be done if adequate arrangements for service of legal proceedings on the foreign AfS can be assured, without the need to apply to the court for leave to serve out of the UK jurisdiction. This could be required e.g. to seek a declaration of non-infringement or revocation of a registered right.

This might be achieved for example under the Brussels Regulation or Lugano Convention, or by altering the court rules to permit service of legal documents in the countries concerned.

Please also see below in connection with EP(UK) patents.

As previously indicated, the rules the IPO is proposing to amend are:

• Rules 23 and Schedule 1 of the Design Right (Proceedings before Comptroller) Rules 1989.
• Rule 103 of the Patents Rules 2007;
• Rule 42 of the Registered Design Rules 2006; and Rule 11 of the Trade Mark Rules 2008.

The IPO will also need to amend the forms, most of which can be amended by directions.

Please indicate any other rues you recommend we should consider.

However, an important additional consideration is that these rules also need to enable third parties to take advantage of the Civil Procedure Rules, Part 63.14 when serving court proceedings, e.g. for revocation, nullity or declaration of non-infringement. That provides an additional reason for requiring an updated UK/Channel Islands address for service on the IPO Register, even if no. The rules setting out the sanctions for failing to provide an address for service for a registered right in the UK also need to be amended. The relevant rules are:

• Rule 104 of the Patents Rules 2007;
• Rule 43 of the Registered Design Rules 2006; and
• Rule 12 of the Trade Mark Rules 200

These rules are clearly primarily aimed at ensuring that the IPO can communicate with parties to proceedings before it – e.g. Patents Rule 104(1) refers to the situation where an applicant or patentee fails to provide an AfS under Rule 103(1), which only applies when there are current IPO proceedings.

However, an important additional consideration is that these rules also need to enable third parties to take advantage of the Civil Procedure Rules, Part 63.14 when serving court proceedings, e.g. for revocation, nullity or declaration of non-infringement. That provides an additional reason for requiring an updated UK/Channel Islands address for service on the IPO Register, even if no proceedings are currently pending.

We would invite the IPO to consider how it can protect the ability of third parties to use Court proceedings to challenge rights for which there is not an address for service in the UK/Channel Islands, and whether it is practical and consistent with the UK’s international obligations, to permit service on the IPO to be treated as substituted service for the purpose of relevant Court Proceedings.

Copyright, Designs & Patents Act 1988, section 281(5), currently refers to agents in the EU. The Comptroller should have power not to deal with non-UK agents. Note that the requirement for a UK place of business would exclude a mere PO box forwarding mail abroad.

The Civil Procedure Rules 63.14 allow for proceedings to be served on the address for service on the IPO or EUIPO registers. Amendment will be needed to prevent the need for service outside the UK jurisdiction.

A separate question is whether a non-UK applicant should be required to appoint a UK representative. We understand that this is not the subject of the present consultation, but may wish to revisit it in the future.

Provisions in any of the legislation (for example in the Trade Mark rules) which allow a party to apply to set aside a decision if they did not receive notice of that decision should be looked at. If the party does not have an address in the UK, despite being required to do so, then it might be made harder for that party to set aside the decision. We have not had time fully to review this and should be pleased to discuss it with the IPO in future.

When the Transition Period ends on 31 December 2020, UK representatives will no longer be able to act before the EUIPO. How supportive are you of the general proposal to amend the AfS rules for applications to the IPO by removing reference to the EEA?

Very supportive. We support the general proposal, for all registered rights. However, some of our members suggest consideration should be given to offering reciprocal AfS rights to EEA member states which allow representation by UK representatives in their national IP offices.

This should only be done if adequate arrangements for service of legal proceedings on the foreign AfS can be assured, without the need to apply to the court for leave to serve out of the UK jurisdiction. This could be required e.g. to seek a declaration of non-infringement or revocation of a registered right.

This might be achieved for example under the Brussels Regulation or Lugano Convention, or by altering the court rules to permit service of legal documents in the countries concerned.

Please also see below in connection with EP(UK) patents.

As previously indicated, the rules the IPO is proposing to amend are:

• Rules 23 and Schedule 1 of the Design Right (Proceedings before Comptroller) Rules 1989.
• Rule 103 of the Patents Rules 2007;
• Rule 42 of the Registered Design Rules 2006; and Rule 11 of the Trade Mark Rules 2008.

The IPO will also need to amend the forms, most of which can be amended by directions.

Please indicate any other rules you recommend we should consider.

However, an important additional consideration is that these rules also need to enable third parties to take advantage of the Civil Procedure Rules, Part 63.14 when serving court proceedings, e.g. for revocation, nullity or declaration of non-infringement. That provides an additional reason for requiring an updated UK/Channel Islands address for service on the IPO Register, even if no. The rules setting out the sanctions for failing to provide an address for service for a registered right in the UK also need to be amended. The relevant rules are:

• Rule 104 of the Patents Rules 2007;
• Rule 43 of the Registered Design Rules 2006; and
• Rule 12 of the Trade Mark Rules 200

These rules are clearly primarily aimed at ensuring that the IPO can communicate with parties to proceedings before it – e.g. Patents Rule 104(1) refers to the situation where an applicant or patentee fails to provide an AfS under Rule 103(1), which only applies when there are current IPO proceedings.

However, an important additional consideration is that these rules also need to enable third parties to take advantage of the Civil Procedure Rules, Part 63.14 when serving court proceedings, e.g. for revocation, nullity or declaration of non-infringement. That provides an additional reason for requiring an updated UK/Channel Islands address for service on the IPO Register, even if no proceedings are currently pending.

We would invite the IPO to consider how it can protect the ability of third parties to use Court proceedings to challenge rights for which there is not an address for service in the UK/Channel Islands, and whether it is practical and consistent with the UK’s international obligations, to permit service on the IPO to be treated as substituted service for the purpose of relevant Court Proceedings.

Copyright, Designs & Patents Act 1988, section 281(5), currently refers to agents in the EU. The Comptroller should have power not to deal with non-UK agents. Note that the requirement for a UK place of business would exclude a mere PO box forwarding mail abroad.

The Civil Procedure Rules 63.14 allow for proceedings to be served on the address for service on the IPO or EUIPO registers. Amendment will be needed to prevent the need for service outside the UK jurisdiction.

A separate question is whether a non-UK applicant should be required to appoint a UK representative. We understand that this is not the subject of the present consultation, but may wish to revisit it in the future.

Provisions in any of the legislation (for example in the Trade Mark rules) which allow a party to apply to set aside a decision if they did not receive notice of that decision should be looked at. If the party does not have an address in the UK, despite being required to do so, then it might be made harder for that party to set aside the decision. We have not had time fully to review this and should be pleased to discuss it with the IPO in future.

Overall, what impact do you believe the change to the AfS rules will have on your business?

Very positive. The AfS changes will not apply to ongoing applications or requests which were filed or have been made before the changes come into force.

If you currently have ongoing cases with a non-UK AfS, how many are you likely to change to a UK address?

N/A

The rules changes will not apply to comparable rights for a period of three years after the end of the transition period, in line with Article 55(2) of the Withdrawal Agreement. We are considering what transitional provisions are necessary.

Rules on AfS will continue to apply, in the same way as they do now, for the following:

• international applications filed via the IPO

• international applications, registered or granted rights designating the UK Examples of when UK national AfS rules would apply include:

• international design applications made under the Hague Agreement designating the UK

• patent applications filed under the PCT, with the IPO as a Receiving Office

Please provide any comments below.

We understand that those filing new UK applications or the top up trade mark or design applications where the EU rights were not granted by 31 December 2020, are required to have a UK address for service and support this.

A UK AfS should be required on entering the UK national phase of a PCT application. The same should apply on grant of an EP patent application designating the UK.

Anyone challenging any IP right after 31 December 2020 should have a UK address for service.

For international design applications we understand that the time limit for responding to a Notification of Refusal issued by the IPO is typically two months. We suggest that this be increased to at least three months so that the Holder has sufficient time to find a UK representative to handle a response.

In the longer term, the IPO is considering updating its forms to ensure they all include an explicit request for a contact email address. This would potentially allow the IPO to further correspond electronically.

Do you believe the provision of a contact email address should be a statutory requirement?

No.

Please explain your answer.

Communication by email is very useful and is generally to be welcomed. However, a few parties may have specific problems, e.g. in providing a non-personal email address at which IPO correspondence can be adequately handled and forwarded to ensure it is properly dealt with.

Since email is not 100% reliable, it should not be relied upon as the _sole_ means of delivering communications with a deadline for reply. To encourage the provision of an email address, it should be made clear in any form which asks for one that this will not occur.

When patents granted by the EPO are designated in the UK, the IPO currently defaults the AfS to that of the patent owner’s address as opposed to the EPO representative address.

To what extent do you agree that the address for service, for EP patents designated in the UK, should remain as the representative registered at the EPO instead of the patent owner?

Disagree.

Please explain your answer.

As discussed above, a UK AfS is necessary for the service of any legal proceedings. The IPO should insist on such an address, and not just take the AfS in the EPO register. That person is not necessarily instructed by their client to accept service on their behalf. The IPO should make it clear that this is one of the obligations of the address for service.

Do you have any further comments on this proposal? Please explain below.

Please note the comments above on the desirability of a UK AfS for all registered rights, regardless of the system under which they are obtained. We would support the requirement for a UK/Channel Island address for service being required for all rights at the end of the three-year period required under Article 55(2) of the Withdrawal Agreement.

We would invite the UK IPO to consider whether a requirement in relation to an address for service could include that it is a substantive address of the individual or organisation appearing before the UK IPO, and not merely a post box which forwards mail overseas – as this needs to be an address at which court proceedings can be served in person. Compare the above suggestion in relation to Section 281(5), which however only relates to persons acting as an agent.

Feedback on this online questionnaire: As a representative body, we have found the format of the questionnaire very difficult. It requires an answer to each question before telling us the next one. To enable the relevant committees to discuss the questions and formulate our response, it was necessary for a single person to pretend to answer the questionnaire, recording the questions as they were presented. It would be much easier if future questionnaires provided a single document with all the questions presented together.

Date published: 20 August 2020