United Kingdom – Tightening the rules on rights of representation at the UKIPO

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Written By Richard Stilwell

We are pleased to report on the progress made by the Chartered Institute of Trade Mark Attorneys (CITMA) in collaboration with the UK Intellectual Property Office (UK IPO) concerning representation rights. Thanks to CITMA's dialogue with the UK IPO, there has been a notable shift towards a more proactive approach in enforcing Address for Service (AFS) requirements and managing unregulated agents.

Address for Service:

In instances where new trade mark, patent or design applications lack an effective AFS within the UK, Gibraltar or the Channel Islands, the UK IPO now treats such applications as withdrawn. They have significantly increased checks to ensure compliance with AFS requirements, with a dedicated team established to handle all AFS requirements and complaints. Moreover, CITMA's efforts have led to enhanced clarity on AFS requirements, with the UK IPO providing a full guidance page on their website.

Managing unregulated agents:

Responding to feedback from CITMA, the UK IPO has revised its processes and guidance concerning unregulated agents, with the IPO re-affirming their authority to bar unregulated agents from acting as representatives if found guilty of misconduct. This measure can be taken if the misconduct reaches a level where, if the agent were regulated, they would have been removed from the register.

As a reminder, all new national applications for patents, trade marks or designs must appoint an address for service in the UK, Gibraltar or the Channel Islands.  Furthermore, since 01 January 2024, all comparable trade marks and re-registered designs derived from EU rights post-Brexit must have a UK address for service to respond to challenges filed by third parties.

Lysaght is based in Jersey, Channel Islands and therefore can act directly in front of the UK IPO for all IP matters.

 
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Author: Richard Stilwell

Richard is a Chartered Trade Mark Attorney and manager in the Patents and Design department. He is responsible for overseeing and managing the day-to-day operations of the department, as well as being part of operational working groups to develop and enhance internal policies and procedures.

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Richard Stilwell

Richard is a Chartered Trade Mark Attorney and manager in the Patents and Design department.  He is responsible for overseeing and managing the day-to-day operations of the department, as well as being part of operational working groups to develop and enhance internal policies and procedures.

Richard graduated from the University of Leeds in 2012 with a Master’s degree (with Distinction) in Medicinal Chemistry, which included a placement year with a major U.K. pharmaceutical company. He joined Lysaght in 2015 and has worked in the IP industry for over ten years.

In 2016 Richard was awarded the Postgraduate Certificate in Intellectual Property (with Distinction) from Bournemouth University, and he became a Chartered Trade Mark Attorney in 2018.

He adds a considerable skill set to the company, where he is responsible for a wide-ranging portfolio, particularly for patent cases in the Caribbean and Middle East.  In his dual role, Richard also handles prosecution and contentious matters within the trade mark department in several complex jurisdictions.

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