4 Months to Respond to Trade Mark Examination Reports Now, Says IPO

4 Months to Respond to Trade Mark Examination Reports Now, Says IPO

Following the unprecedented disruption caused by Coronavirus and the closure of Intellectual Property Office (IPO) buildings, there are some alterations to the services the government agency is providing at present.

Earlier this month, the IPO closed access to our buildings until further notice, in accordance with the government’s advice on measures to tackle the spread of the coronavirus.

With its staff working to avoid unnecessary travel and social contact, the majority of the IPO’s services remain unaffected and the agency will continue to operate as normal for customers apart from some areas set out below.

Aiming to support rights holders, businesses and IP professionals at this time of unprecedented disruption, the IPO decided to declare 24 March, and subsequent days until further notice, interrupted days.

This means that any deadlines for patents, supplementary protection certificates, trade marks, and designs, and applications for these rights, which fall on an interrupted day, will be extended until the IPO notifies the end of the interrupted days period. To support rights holders, businesses and IP professionals in planning ahead, the IPO will provide a minimum of 2 weeks’ notice before ending the interrupted days period.

Customers responding specifically to trade mark and design examination and hearing reports, and filing evidence, should now use the reply button in the examination report or email address provided, the IPO says.

For new trade mark examination reports the agency will allow four months to respond, not the current two months, removing the need for an extension. The IPO is unable to extend the reply period for designs examination reports but extensions are available.

Most accepted trade marks will be published for purposes of opposition. There may be a delay for some because of the need to notify owners of any UK earlier marks (and international marks with UK designation) identified in search report which currently is only done by post.

The IPO warns that there will be a delay in receiving postal versions of trade mark and design registration certificates. If you have an urgent business need, the agency can provide email copies on request.

The IPO will continue to receive and process international applications and registrations and correspond with holders by email where possible.

The IPO also warns that it is currently unable to process paper forms, faxes and paper correspondence. Since no documents can be filed by hand at its offices, customers should use online services and communicate with the agency digitally whenever possible. The IPO accepts electronic signatures on forms and other documents. The agency has created a new email address for services that are not available online called paperformcontingency@ipo.gov.uk, which can be used instead of faxing or posting documents to it. If customers file paperwork with the IPO by post, these documents will not be processed until normal services are resumed and the agency’s sites re-open. At this point, customers will be given the date of receipt as a provisional filing date.

The IPO will extend time periods where national and international legislation allows. The agency will support affected customers using the discretionary powers available to it. Customers should not use the above email address for requests under section 23 (permission to file patent applications abroad) or for section 22 applications in general. With regard to any queries relating to Section 22 or Section 23, customers are advised to call 01633 813558 for advice.

The IPO asks all rights holders and IP professionals to continue to file as normal where possible. In view of the current challenges faced by many rights holders and IP professionals, the agency will be introducing the service changes with immediate effect. The formal notice and certificate of declaration set out more information on the new procedures.

The IPO will review the situation in three weeks’ time (17 April 2020) and will either continue with the period of interruption or announce that the period will end after a further two weeks.

For more information on IPO’s work, please follow updates on their website.

Share this article:

Related Articles

Brian Larson writes about law, focusing on the protection of intellectual property rights.