UK IP Rights After Brexit

With the Brexit story continuing and no-one still yet knowing what the final outcome will be, I’m looking at what is likely to happen to UK intellectual property rights if, when and how the UK leaves the European Union (EU), particularly in the scenario of a no-deal Brexit.

Recently, the UK Intellectual Property Office (UKIPO) published new guidelines as to how IP rights will be handled in the event of a no-deal Brexit.

If your business has IP rights in the UK, how might you be affected?

 

Patents

There are currently two types of patent right available in the UK: a UK (GB) national patent filed with the UKIPO, and a UK-validated European patent filed with the European Patent Office (EPO).

If the UK leaves the EU without a Brexit deal then the impact upon these existing patent rights will be minimal.

UK patents granted by the UKIPO will largely be unaffected as the UKIPO is not an EU institution.  A few areas of UK patent law originate from EU law and regulation, and their implementation, and thus have the potential to be affected.  These include supplementary protection certificates (for pharmaceutical products and agrochemicals); biotechnology inventions; compulsory licensing; and clearance to conduct certain studies, trials and tests in relation to patented pharmaceuticals.  However, the relevant EU legislation (or its domestic implementation) will be retained in UK law under the EU Withdrawal Act 2018, and thus, after exit day, things will continue as they do now.

European patents prosecuted and granted by the EPO under the European Patent Convention (EPC) that designate the UK will also be unaffected.  Again, the EPO is not an EU institution.  Being a contracting state to the EPC is separate from being a member of the EU.

There is a third patent right currently being developed in Europe, the unitary patent, that is close to coming into effect.  This is a new pan-European patent and associated court system, intended to cover all EU member states.  Its jurisdiction will be the EU, and, at the time of writing, the unitary patent has not yet come into effect.

 

Trademarks

If the UK leaves the EU without a deal then the following IP rights will no longer be valid in the UK:

  • Protected trade mark registrations, granted by the EU Intellectual Property Office (EUIPO)
  • Protected international trade mark registrations, filed under the Madrid Protocol at the World Intellectual Property Organisation (WIPO), designating the EU

UK law is being revised such that, from exit day, comparable UK trade marks will be created for all EU registered trade marks, and for all international trade mark registrations (under the Madrid Protocol) that designate the EU, provided they are registered before exit day.

These new rights will be treated as if they had been applied for and registered under UK law.

For any pending applications, applicants will be able to apply to register a UK trade mark (subject to certain conditions) within nine months after exit day.

These changes will occur at no cost to the holder of the respective IP rights.  However, for pending applications, the standard UKIPO fee structure will apply as these will be considered a new application.

 

Designs

Similarly, if the UK leaves the EU without a deal then the following IP rights will cease to be valid in the UK:

  • Registered community designs (RCDs), granted by the EUIPO
  • Protected international design registrations, filed under the Hague Agreement at WIPO, designating the EU
  • Unregistered community designs (UCDs)

UK law is being revised such that, from exit day, comparable UK registered designs will be created for all EU registered community designs, and for all international design registrations (under the Hague Agreement) protected in the EU, provided they are registered before exit day.

These new rights will be treated as if they had been applied for and registered under UK law.

For any pending applications, applicants will be able to apply to register a UK registered design (subject to certain conditions) within nine months after exit day.

Unregistered community designs that protect a design in the UK will continue to provide protection in the form of a UK continuing unregistered design.  This will arise automatically and will continue for the remaining term of the relevant UCD.

These changes will occur at no cost to the holder of the respective IP rights.  However, for pending applications, the standard UKIPO fee structure will apply as these will be considered a new application.

 

Next Steps

There are further specifics, constraints and details for each type of right.  For further information and advice as to how this might affect your business, contact the UKIPO and / or a registered IP attorney.

Alistair Curson

 

References

Burnett-Hall, G. (2018). “Brexit & Patents”. Retrieved March 30, 2019, from: https://www.marks-clerk.com/MarksClerk/media/MCMediaLib/Reports/Brexit-series-Patents.pdf

European Patent Office. “Unitary Patent & Unified Patent Court”. Retrieved March 30, 2019, from: https://www.epo.org/mobile/law-practice/unitary.html

Marks & Clerk. “What countries will the Unitary Patent and Unified Patent Court cover?”. Retrieved March 30, 2019, from: https://www.marks-clerk.com/Direct-Access-Pages/What-countries-will-the-Unitary-Patent-and-Unif.aspx#.XJ62eJgzaHs

UKIPO. (2019, March 21). “Changes to trade mark law in the event of no deal from the European Union”. Retrieved March 30, 2019. from: https://www.gov.uk/government/publications/changes-to-trade-mark-law-if-the-uk-leaves-the-eu-without-a-deal/changes-to-trade-mark-law-in-the-event-of-no-deal-from-the-european-union

UKIPO. (2019, March 22). “Changes to registered design, design right and international design and trade mark law if the UK leaves the EU without a deal”. Retrieved March 30, 2019, from: https://www.gov.uk/government/publications/changes-to-design-and-trade-mark-law-if-the-uk-leaves-the-eu-without-a-deal/changes-to-registered-design-design-right-and-international-design-and-trade-mark-law-if-the-uk-leaves-the-eu-without-a-deal

UKIPO. (2019, March 22). “IP and Brexit”. Retrieved March 30, 2019, from: https://www.gov.uk/government/publications/ip-and-brexit-the-facts/ip-and-brexit

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