Table of Contents
Patents of Invention
Legal Basis
– Patents Act 1977, as amended.
– Patents Rules 2007, as amended.
Membership in International Conventions
– Paris Convention.
– European Patent Convention (EPC).
– Patent Cooperation Treaty (PCT).
Filing Requirements
– Full details of the applicant(s) for the patent including state of incorporation/nationality;
– A description of the invention, including claims and abstract;
– Drawings where appropriate (informal drawings as a minimum with formal drawings to be filed within sixteen months of the earliest claimed priority date);
– Country and date of filing of any application from which priority is to be claimed;
– Certified copy of each application from which priority is claimed;
– Full details of the inventor and the applicant’s right to the grant of a patent;
– Official fees are payable to the UKIPO in respect of filing, search and examination.
Remarks
National Phase of PCT: under Chapter I: 31 months; under Chapter II: 31 months.
Validity: patent issued after formal and substantive examination – valid for 20 years.
Annuities: are payable annually in respect of the fifth and subsequent years.
Opposition: there is no provision for opposition to the grant of a patent. Third party observations can be filed during examination.
Trade and Service Marks
Legal Basis
– Trade Marks Act 1994, as amended.
Membership in International Conventions
– Paris Convention.
– Madrid Protocol.
Filing Requirements
– If mark is other than a word in block lettering, a representation of the mark (preferably size 8 x 8 cm) is required.
Remarks
Duration – renewals: 10 years from the filing date; renewable for further periods of 10 years.
Obligation to use the registered mark: any trademark not used for five consecutive years from the date registration is granted may be revoked on application by a third party.
Opposition: after the trademark application has been accepted by the UKIPO it is advertised in the Official Journal and is open to opposition for two months. A further one-month extension of the two-month period may be obtained.
Industrial Designs
Legal Basis
– Registered Designs Act 1949 to 1961, as amended by the Copyright, Designs and Patents Act 1988, and the Regulatory Reform (Registered Designs) Order 2006.
– Registered Designs Rules 2006 and the Registered Designs (Fees) Rules 2006.
Membership in International Conventions
– Paris Convention.
– Hague Agreement, Geneva Act.
Filing Requirements
– Authorization of agent (not legalized) is only required in case of appointment of a new agent subsequent to filing;
– Representation of the design (can include photographs);
– Priority document (for Convention applications).
Remarks
Duration: after formal examination: 5 years from the filing date. Renewable up to 25 years.
Opposition: there is no provision for opposition before registration of a design. However, there are provisions for post-registration invalidation proceedings at the UKIPO.
Domain Names
Filing
ccTLD: .uk
Applicant: individuals and legal entities.
Local presence: required only for restricted domains.
Remarks
Duration – renewals: two years, renewable.
Uniform dispute resolution procedure: available (variation of UDRP) before Nominet.