Changes to UKIPO practice on Address for Service and Unregulated Agents

What is a valid Address for Service and When do I need one?

As part of the UK Intellectual Property Office changes following the UK departure from the European Union, changes were made to the Address for service requirements.  A valid address for service for all new proceedings in the UKIPO is now an address in the UK, Gibraltar or the Channel Islands or Isle of Man at which you can receive correspondence from the UKIPO.  It can be any address with which you or your business is associated, including your home or business address.  If you use a representative, their address will be recorded as the address for service and therefore your representative must have a valid address for service.

Whilst it is possible to provide a virtual office or PO BOX address, it must still be a valid address where correspondence can be delivered and read by the intended recipient.

If you do not provide a valid address for service, this could lead to the application being treated as withdrawn.

For existing granted patents with an address for services in the EEA, a UK address for service is not required to simply renew or change your address as the rights holder, but all other actions relating to a granted patent will require a valid address for.

For existing granted trade marks and designs with an address for service in the EEA, a UK address for services is not required to renew or surrender your registration, record a licence agreement or change your address as the rights holder, but all other actions relating to a granted patent will require a valid address for service.  If you do not provide a valid address for service, proceedings could continue without your involvement.

Further information about the specific details of when a valid address for service is required can be found on the UKIPO website: Address for service for intellectual property rights - GOV.UK (www.gov.uk)

What checks are made by the UKIPO?

Following the recent rise in unregulated representatives at the UKIPO, the Office is taking a more active role in enforcing the address for services requirements.

The UKIPO has launched a dedicated team to handle address for service requirements and complaints.  They are making significantly more checks on addresses to ensure compliance.  In addition, if you consider that the address given is not genuine or valid, a complaint may be filed at the UKIPO who will then review the matter.

What about unregulated agents?

The UKIPO has the power to prevent unregulated agents from acting as a representative before the office if they are found to be guilty of misconduct. 

The UKIPO will receive complaints about unregulated representatives, although the only sanction they can apply is to stop that person from acting as a representative before them again.

Why should I use a regulated agent?

Regulated representatives have been through a rigorous training and examination program to ensure they can provide the specialist services necessary to best protect your intellectual property.

Furthermore, advice from a regulated representative is given in confidence, being subject to legal privilege, and all regulated agents are regulated by the Intellectual Property Regulation Board, and independent regulatory body.

All of the qualified attorneys at Mathisen & Macara are regulated attorneys having undertaken many years of training and ongoing education to keep up to date with changes in practice.