Effective January 14, 2019 some important changes were made to the UK trademark law. The reforms affect trademark applications and registrations, trademark management and enforcement of trademarks. Trademark owners will now receive trademark renewal notifications earlier, at six months prior to renewal date as opposed to the previous four. If the trademark owner fails to renew the trademark, restoration is possible if the failure to renew is “unintentional.” This changes the previous test where the UKIPO had to assess whether it was “just” to renew the trademark. Consequently, the restoration process should become easier and more objective. Additionally, applications no longer need to be accompanied by a graphical representation of a trademark, but applicants may choose instead from a wide variety of formats, including submitting sound and video files online. Source: www.dlapiper.com/en/uk
Effective April 6, 2018, renewal fees in the UK for maintaining a granted patent in force will see an increase of £10 from current fees for each year beginning with the 12th year to the 20th year. These increases are relatively modest and should only have a small impact on proprietors. Source: BeckGreener
The minister of IP, Sam Gyimah, confirmed the ratification of the UPC Agreement on 4/26/2018. The UPC will have jurisdiction over patent disputes across its contracting states, delivering a single judgment in cross-border disputes. However, Germany, which has to ratify the UPC for it to come into effect, may still prove a stumbling block to its implementation. The UK and France are the other two states that must ratify the UPC. Both have now ratified. Source: WIPR
Effective April 6, 2018 the UK has made small increases to most of its fees. In addition, excess claims and page fees are being introduced. It will however still be possible to file a UK patent application without any fees. Thus a priority date can be established without incurring patent office fees. Search and Examination of UK Applications: It is necessary to pay an application and search fee. Both of these fees will increase slightly after April 6, 2018, and the application fee will incur a small surcharge if you choose to pay this after filing the application. A more significant change is the introduction of excess claims fees of £20 for each claim over 25. The examination fee will also increase slightly. In addition, excess page fees of £ 10 for each page over 35 will apply. The increased application, search, and examination fees, and the new excess claims and page fees will apply to International applications entering the UK national phase. Source: Dehns
An increase in fees for patents are planned to take place on 6 April 2018: Increase to the application fee, and introduction of a 25% surcharge if it is not paid at the time of filing. Increase to the fees for search and substantive examination. Introduction of an excess claims fee (£20 for each claim over 25, payable at search). Introduction of an excess pages fee (£10 for each page of description over 35, payable at substantive examination). A £10 increase to renewal fees from year 12 onwards.
The current law provided only for the registration of trademarks previously registered in the UK, as a European Union Trademark, or as an International Registration designating UK, which results in the extension of identical rights in Cayman with no provision for opposition. The new trademark law will make it possible for trademark proprietors to file for trademark protection without the need to re-register a UK or EUTM registration in the Cayman Islands. Cayman trademark registrations based on UK/EU trademark registrations will continue to have effect until the next renewal/expiry date and will fall due for renewal on the same date as the underlying UK/EU trademark. Future trademark renewals can be made independently. The renewal period of marks filed under the new law will be 10 years from the date of filing. Source: HSM IP, Cayman Island and Caribbean IP, USA
The UK Minister for intellectual property recently stated that the UK will ratify and join the Hague Agreement for International Design registrations by March 31, 2018. The service will come into effect on April 6, 2018. As of now, UK-based applicants are able to apply for an International Design by virtue of being part of the EU. This separate ratification by the UK will ensure that UK-based applicants will continue to be able to file International Design registrations after the UK leaves the EU. Under the Hague Agreement it is possible to submit a single ‘International’ design application which covers selected states that are members of the Hague Agreement. By virtue of the UK joining the Hague Agreement, the UK will also be individually selectable from April 2018 as a designated state rather than only via an EU designation. Source: SMD Country Index- Boult Wade Tenant, United Kingdom
The UK’s Intellectual Property Minister Lady Neville-Rolfe announced today that the UK Government intends to ratify the Agreement on a Unified Patent Court. This is highly significant, as the UK (along with France and Germany) is one of the three countries whose ratification of the treaty is essential for the UPC and Unitary Patent system to come into effect. Today’s announcement therefore ends months of uncertainty which have followed the shock result in the UK’s June referendum, in which a majority of voters opted to end the UK’s EU membership. A total of 11 countries, including France, have now ratified the Agreement, with at least three more on the way besides the UK and Germany. This means that, subject to UK ratification taking place in the near future, all eyes will turn to Germany as the country which will determine the starting date for the biggest shake-up of the European patent system in decades. Assuming that Germany does not delay with its own ratification, the UPC and Unitary Patent could potentially become reality by Spring or Summer 2017, only a little behind schedule. Source: Dehns.com
Effective October 1, 2016 renewal fees for designs will be reduced. While renewal fees will increase every five years during the term of protection, the biggest savings will be seen in the third and final renewal periods. For example, the renewal fee payable at the end of year 15 will be £110 compared with the current £310 (representing a 64% reduction). At year 20, the fee will be £140 instead of the current £450 (a 69% saving).
The payment of advance annual fee payments will now be prohibited in the Cayman Islands effective August 1, 2016. The announcement made by the General Registry of the Cayman Islands requires that all trademark and patent annual fee payments are to be made on or after January 1st of the year in which they are due. A penalty will continue to apply for fees paid after March 31st. Prior to this decree it was commonplace to pay annuities ahead of time, sometimes years in advance or up to the next renewal date. This option will no longer be allowed after August 1, 2016. Prepayment of annuities will be accepted up until the end of July 2016.