The IPKat almost forgot to mention that 'The Patents, Trade Marks and Designs (Address for Service) Rules 2009 (SI 2009/546)' have come into force on 6 April 2009. As a result applicants and any person commencing or opposing proceedings before the comptroller or registrar will be able to provide an address for service anywhere in the European Economic Area (EEA) or the Channel Islands.Left: this address for service is based in the UK (picture taken from Mail Order Moggies)
On its website the UK IPO helpfully explains that
"... the changes will:
- Give individuals and businesses the choice of using patent and trade mark attorneys based anywhere in the EEA or the Channel Islands.
- Make it easier for individuals and businesses to use the same address for service when dealing with multiple national offices in Europe."
Before the introduction of new 'Address for Service rules', it has been necessary for a party involved in inter-partes proceedings to provide an address for service in the UK. The new rules remove this restriction; all parties will be able to use an address for service anywhere in the UK, as well as in any other country in the EEA or the Channel Islands.
To read the 'The Patents, Trade Marks and Designs (Address for Service) Rules 2009', please click here. The explanatory memorandom can be found here.
Merpel likes the idea of 'freedom to provide cross-border services' but wonders what the long term implications of the new rules could be.... Tufty is slightly bemused by these news and wonders whether any other European or EEA jurisdiction have introduced similar rules. Do our readers know?
Reviewed by Birgit Clark
on
Thursday, April 09, 2009
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Posts
Is there any reason why the Isle of Man has been omitted?
ReplyDeleteDoes that mean a foreign attorney can act before the IPO? Shock! Horror? Foreign EU qualified attorneys don't really need to qualify here anymore, yes? They can just go ahead and practice... no QLTT if you only work in trade marks? Please can you ask the IPO to confirm. Merci.
ReplyDeleteWhat the IPO fails to mention is that UK businesses and individuals, either through trade mark attorneys, patent attorneys, other representatives or representing themselves, do not have this option in all member states. It would be tempting to correlate the IPO's recent announcement of job cuts with its increasing subjugation by the Commission.
ReplyDeleteI believe the same rules apply in Germany.
ReplyDeleteJudging from some of the comments made already, I think it's worth quoting some of the explanatory memorandum:
ReplyDelete"The second aim of these changes is to avoid the existing Rules being referred to the
European Court of Justice by the European Commission. The Commission has expressed the
opinion that the current rules limiting choice to a UK address amount to a restriction of the
freedom to provide services as enshrined in Article 49 of the EC Treaty."
and
"It was felt that were the UK to remove restrictions on address for service, similar
provisions should also be removed where they exist in other EU Member States. The UK supports
this view and has raised with the European Commission."
So, the Isle of Man is excluded because it is not part of the European Union and the free provision of services requirement does not apply.
As for other countries: don't hold your breath, but those that don't already are likely to fall into the same line.
As for the effect, I doubt it will have much. If I tried to represent my client's interests in Germany (say) and made a mistake due to my unfamiliarity with German national law, I would not be surprised if I were sued by my justifiably annoyed client. Just because you can, doesn't mean anyone should or would.
Dear Gerontius - I have only just seen your comment. Similar rules do indeed apply in Germany but I believe (and some others too) that you need some kind of presence in Germany.
ReplyDeleteOn a more global scale, why can US law firms pitch up here but no UK patent attorney can buy a US patent attorney firm... Grr....
ReplyDelete@Gerontius - I should have been clearer in asking my question sorry. I am well aware of the Protocol 3 exclusion of the Isle of Man from the freedom of movement of services but that exclusion applies equally to the Channel Islands. My puzzlement was why one and not the other?
ReplyDeleteAny ideas as to how this will impact litigation in the Patents Court? If I want to apply to revoke the patent of, say, BIG CORP USA, I look at the Patents Register, look at the address for service (usually a Patent Agent firm in the South East of England or London), issue my proceedings at the Patents Court with the address for service as the firm of Patent Agents, and then serve the proceedings on firm of Patent Agents. Which is great, because it means that I don't have to effect service in the USA which is a pain. So, now, if this address for service on the register can be anywhere in the EU, it's a bit more of a pain. We now have to deal with translations, service of documents in Budapest, Bratislava and Bucharest, longer service periods, etc.... More delays and expense. Any comments?
ReplyDeleteI think the reason the Isle of Man isn't mentioned in this SI is because it was already an allowable address for service. The relevant Acts extend to IoM, and IoM is effectively deemed to be part of the UK for all IP purposes (including copyright).
ReplyDelete