RESOURCES

 

REGISTRATION OF UK PATENTS & DESIGNS

REGISTRATION OF UK PATENTS & DESIGNS

It is possible to register UK national patents, European patents (UK) and UK registered designs in a number of other states and territories. This page lists the states and territories in which we believe registration to be possible for each type of intellectual property.

The information in this sheet is compiled from the basic guide available from the UK Intellectual Property Office (UKIPO) and more recent information which has been supplied to us by attorneys working in or with the countries concerned when this sheet is updated annually. It has not necessarily been obtained from official sources and, although it is up-to-date to August 2014 as far as we are aware, neither Mewburn Ellis LLP nor the UKIPO can accept responsibility for the accuracy of the information.  Due to the number of countries involved, it is unlikely to be one hundred percent accurate or complete.

UK PATENTS

Automatic extension of UK national patents

Patents granted under UK national law are automatically extended to:

British Indian Ocean Territory
Swaziland

Registration of UK national patents

Unless otherwise stated, we believe that registration must be applied for within three years from the date of grant of the UK patent.

Unless otherwise stated, the maximum term of the registration is believed to be 20 years, but in general the overseas registration will remain in force only for as long as the corresponding UK patent is in force.

If the UK patent is allowed to lapse or is revoked, then all corresponding overseas registrations will automatically lapse or be revoked at the same time.

Registration of UK national patents is available in:

Anguilla
Kiribati
Bermuda
Montserrat
British Virgin Islands
Nauru4
Brunei Darussalam17 Samoa5
Cayman Islands1 Seychelles
Falkland Islands Sierra Leone
Fiji
Solomon Islands
Gibraltar
St. Helena
Grenada2 St. Lucia6
Guernsey1&8 Turks and Caicos Islands7
Guyana3 Tuvalu
Jersey

1 Registration may be applied for at any time after grant and during the life of the UK patent.
2 The maximum term of registration is believed to be 14 years.
3 The maximum term of registration is believed to be 16 years.
4 An Australian or USA patent may also be registered.
5 2011 legislation in Samoa came into force on 1 October 2012.  There are still no rules promulgated to support the new legislation but we understand that the new law is in operation without regulations being in place.  The new law removes the ability to re-register UK patents in Samoa.
6 Despite a new law of 2003 it appears that UK patents can still be registered in St Lucia.
7 Registration must be applied for within five years from the date of grant of the UK patent.
8 New law now enabled which allows registration of patents from Australia, Austria, Canada, China, EPO, France, Germany, Hong Kong, India, Ireland, Israel, Japan, New Zealand, Norway, Russian Federation, Singapore, Sweden, United Kingdom and USA.  Any patent re-registered in Guernsey which remains registered in its country of origin for five years will remain in force regardless of what happens to the original patent on which it was based.

EUROPEAN PATENTS (UK)

Registration of European patents (UK) in overseas states or territories

Unless otherwise stated, we believe that registration must be applied for within three years from the date of grant of the patent.

In all cases the maximum term of the registration is believed to be 20 years, but in general the overseas registration will only remain in force for as long as the corresponding EP(UK) is also in force.

If the EP(UK) is allowed to lapse or is revoked, then all corresponding overseas registrations will automatically lapse or be revoked at the same time.

Anguilla Jersey 
Bermuda
Kiribati12
British Virgin Islands  Montserrat 
Brunei Darussalam17 Nauru12
Cayman Islands9 Samoa10
Falkland Islands
Seychelles
Fiji
Sierra Leone 
Gibraltar
Solomon Islands12
Grenada
St Helena 
Guernsey8&9 Turks and Caicos Islands11
Guyana
Tuvalu

9 Registration may be applied for at any time after grant and during the life of the EP(UK).
10
2011 legislation in Samoa came into force on 1 October 2012. There are still no rules promulgated to support the new legislation but we understand that the new law is in operation without regulations being in place. The new law removes the ability to re-register EP(UK) in Samoa.
11
Registration must be applied for within five years from the date of the grant of the EP(UK).
12 Local legislation is silent on the question of European patents but registration of an EP(UK) thought to be allowable.

UK REGISTERED DESIGNS

The following countries allow an automatic extension without the need for local registration:

Bermuda Montserrat
British Indian Ocean Territory Nauru
British Virgin Islands St. Helena
Falkland Islands Seychelles
Fiji Sierra Leone
Gibraltar Solomon Islands
Grenada Swaziland
Kiribati

In the following countries, it would appear that the act of applying for design protection based upon a UK design is a mere formality and that registration will be granted by local application:

Anguilla Malta15
Guernsey14&16 Trinidad and Tobago13
Guyana
Tuvalu
Jersey13

It is not clear which, if any, of the above countries is covered by, or will allow the registration of a Community Design registration. Most local legislation is silent on this question. It does appear that a CRD can be re-registered in Guernsey and may automatically extent to Montserrat.

13 Application must be made within three years of registration in the UK.
14 Application may be made at any time during the life of the UK registration.
15
Application must be made within four months of registration in the UK.
16 New law now enabled and appears not to restrict registration.
17 Patents Order, 2011 has come into force from 1 January 2012. Transitional provisions allow for the registration of any existing application for the reregistration of a UK or EP(UK) patent filed under the previous legislation to be granted under that previous legislation. Moreover, if a UK or EP (UK) patent has been granted within the 36 months preceding 1 January 2012 and is still in force at that date, then an application for reregistration can be filed within 24 months of 1 January 2012 ie by 1 January 2014. If an application for a UK or EP (UK) patent has been made before 1 January 2012 and is still pending at that date, then the applicant may apply to register the eventual granted patent within 12 months of the issue date of that granted patent. These provisions also apply to patents granted or applied for under Singapore or Malaysian law.

This information is simplified and must not be taken as definitive statement of the law or practice.