How to Apply for a UK Patent, Trade Mark or Registered Design

 

Jane Lambert

On 24 July 2025, the World Intellectual Property Organization ("WIPO") announced a global celebration of intellectual property examiners on 11 November 2025 and invited everybody to join in.   As that global celebration coincides with Wales Enterprise Day, the Menai Science Park ("M-SParc") will combine the two celebrations with an in-person and online lunchtime seminar on how to apply for a UK patent, trade mark, registered design or plant breeder's right.

The seminar will begin with an introduction to intellectual property and an outline of rights that come into being automatically, such as copyrights and unregistered design rights and rights that have to be registered, such as patents, trade marks and registered designs.   

Applications for patents have to be examined for compliance with the Patents Act 1977 and secondary legislation under that Act.  The officials who carry out such examinations are called "patent examiners".   We plan to introduce the audience to a serving or recently retired patent examiner who will explain his or her role and what he or she looks for in a patent application.

Applications to register trade marks also have to be examined for compliance with the Trade Marks Act 1994 and secondary legislation.   The officials who carry out such examinations are known as "trade mark examiners", not surprisingly.  We shall also introduce a serving or recently retired trade mark examiner who will explain his or her role and what he or she looks for in a trade mark application.  

The procedure for registering designs is different because there is no substantive examination of design applications.  There is therefore no such official as a "design examiner."  However, we will explain the registration process and the steps that need to be taken to avoid expensive proceedings in the Intellectual Property Office's tribunals or the courts should someone challenge the registration.

Applications for plant breeders' rights are very different because they are handled not by the UK Intellectual Property Office but by the Plant Variety Rights Office in Cambridge.  Plant breeders' rights used to be a minority interest among intellectual property practitioners, but climate change and the need to develop new drought or flood-resistant species, as well as the development of viticulture, have increased its importance.   Aberystwyth University Institute of Biological, Environmental and Rural Sciences is a leading research centre in this area.  We shall invite a representative of the Plant Variety Rights Office to outline the procedure for obtaining plant breeders' rights in this country.

Although it is possible for a business owner or manager to apply successfully for a registered design, trade mark or even a patent, there is a lot that can go wrong with such applications.  It is therefore advisable to instruct a patent attorney to prepare and prosecute a patent application, or a trade mark attorney to prepare and prosecute a trade mark application.   Both patent and trade mark attorneys apply to register designs.  We shall present both a patent attorney and a trade mark attorney to talk about their work and how they resolve examiners' queries and objections.

Sometimes an examiner's objections cannot be overcome, and the matter has to be resolved by an official appointed by the Chief Executive of the Intellectual Property Office known as a "hearing officer."  This is where I come in because barristers often represent parties to disputes with examiners.   Proceedings before hearing officers are less formal than court procedures, but the same rules of evidence and similar rules of procedure apply.   I have written about such hearings in If the examiner says 'no' - ex parte hearings in the Trade Marks Registry on 10 August 2015 in NIPC London.   I shall talk about proceedings before hearing officers and appeals to the courts or the Appointed Person at the seminar.

Although the emphasis will be on applications for patents, trade marks and designs in the United Kingdom, we will also discuss applications for European patents (including unitary patents), European Union trade marks and Community designs and plant breeders' rights and applications for patents, trade marks and designs outside Europe under the Patent Cooperation Treaty, the Madrid Protocol and the Hague Agreement.

Anyone wishing to discuss this article further may call me on 020 7404 5252 during UK office hours or send me a message through my contact form at any time.

The IPO's Welsh Language Policy

Author Diomedea Exulnns  Licence CC BY=SA 3.0  Soutce Wikimedia Nant Gwrtheyrn

 

Jane Lambert

Occasionally I am asked why I spend time and money on learning Welsh. After all, so the argument runs, only a few hundred thousand speak it and nearly all of them speak also English. The answer is the same as the reason for learning any language.  A language is the key to a treasure house of ideas and information not all of which are translated or translated well.

Ideas and information are intellectual assets  They take several forms: a line of verse, a catchy song,  an elegant solution to a technical problem or an unforgettable slogan.   They are the product of skill and labour and sometimes genius.   To incentivize their generation the law protects them.  It is that legal protection that we call intellectual property.

Ideas that are generated in Welsh can be protected in Welsh.  The Intellectual Property Office which is headquartered in Newport has operated a Welsh language scheme since 3 Oct 2007.  It was prepared in accordance with the guidelines of the Welsh Language Service pursuant to s.21 (3) of the Welsh Language Act 1993.

Paragraph 1 of that scheme promises "that, in the conduct of public business, it will treat the English and Welsh languages on a basis of equality so far as is both appropriate to the circumstances and reasonably practicable."  The document continues that, where possible, the IPO will explain and offer the IP system in Welsh to those customers wishing to register their IP rights in the United Kingdom through the medium of Welsh.  

Rule 14 (1) of the Patents Rules 2007 which came into effect on 17 Dec 2007, requires the contents of all documents contained in a patent application to be either Welsh or English.  However, while the English language patent forms are available online, Welsh speaking applicants or their agents must call 01633 814936 or email information@ipo.gov.uk if they require a Welsh version of any of the IPO's forms/booklets.  According to David Pearce, no patent applications in Welsh had been received by the Office by 28 Jan 2008 (see Welsh patent applications: the results are in! 28 Jan 2008 IPKat).

There is no equivalent to rule 14 (1) of the Patents Rules 2007 in The Registered Designs Rules 2006 or The Trade Marks Rules 2008 but para 49 of the scheme offers to accept applications for registered designs and trade marks in Welsh and to make the relevant forms and guidance available in Welsh on the IPO's website.  As far as I can see, applicants or their agents would have to call the above number or send an email to request the relevant form or other document in Welsh.

It would appear from para 34 of the scheme that proceedings before IPO hearing officers can take place in Welsh.  The paragraph states that if the hearing takes place in Wales, it can be conducted in Welsh in the Newport Office where arranged in advance. If, however, no advance notice is given then due to limitations on the number of Welsh speaking staff and the lack of an in-house interpreter, there may be no legally and technically competent Welsh speaker immediately available. The applicant will then be given the choice, without prejudice, of continuing with the hearing in English or adjourning it until a Welsh speaker is available.

The rest of the document deals with such matters as signage, telephone calls, visits from members of the public, seminars and publications. I owe it to the IPO for my first lesson on soft mutations while driving around Newport searching for signs to Concept House when I noticed that "patent" had suddenly morphed into "batent".

I do not know whether any of the Appointed Persons speak Welsh but the Business and Property Courts in Wales ought to be able to hear appeals from Welsh speaking hearing officers in Welsh as well as infringement, invalidity, revocation and threats actions in all areas of IP law except patents, registered designs, chip topographies and plant varieties. The Court of Appeal and Supreme Court have been known to sit in Cardiff and there is at least one Welsh speaking Supreme Court justice.

My Welsh is not yet good enough to present a case in Welsh, but once it is ............ Anyone wishing to discuss this article may call me on +44 (0)7404 5252 during office hours or send me a message through my contact page.