What consequences will BREXIT have for your Intellectual Property Rights?

On 23 June 2016 the UK held a referendum in which it was decided that it will leave the European Union, thus making the “BREXIT” a reality. This raises a series of questions for intellectual property rights (IPR) holders about the status of their existing rights as well as future developments.  We will in the following look at what impact the BREXIT is expected to have on IPR. (updated 14 March 2017)

European patents

For “classical” European patents, i.e. based on the current European patent system with central filing and examination at the European Patent Office (EPO) followed by validation in selected European countries, there will be no change as a result of the UK leaving the EU. This is due to the fact that the current European patent system is independent of the EU and includes both EU and non-EU member states.

The Unitary Patent and the Unitary Patent Court (UPC)

While the implementation of the Unitary Patent system and the UPC was temporarily derailed by the Brexit vote, things now appear to be on track once again after the announcement by the UK Intellectual Property Office in late November 2016 that it intends to ratify the UPC Agreement and thus to participate in the new system in spite of Brexit. The current target date for the start of operations for the Unitary Patent and the UPC is now 1 December 2017.

Supplementary Protection Certificates (SPCs)

As in other EU countries, SPCs for patented pharmaceutical and plant protection products are granted in the UK under an EU regulation, which will no longer apply once the UK leaves the EU. For existing SPCs in the UK, it is expected that appropriate UK legislation will be implemented to ensure that they continue to have effect once the UK leaves the EU. Similarly, it is expected that new legislation will be enacted to provide a new, national SPC protection for the UK, although whether such a UK SPC would be similar to the current EU SPC system or would be modified is unknown.

Trademarks

Once the UK is no longer a member of the EU, existing EU Trademarks (EUTMs) will no longer be valid in the UK. It is expected, however, that transitional arrangements will be implemented to allow conversion of existing EUTM rights into corresponding national UK trademark rights. Registration of trademarks in the UK will in the future have to be obtained by way of national applications, and even though this is at least a couple of years down the road, trademark owners having the UK as an important market may want to consider filing both a UK and an EUTM application for key trademarks.

The situation for trademarks may be complicated by requirements for use of the mark to avoid the risk of revocation. This could work two ways, i.e. EUTMs which had previously been used only in the UK could risk revocation for non-use in the EU, while it is conceivable that conversion of an EUTM to a national UK trademark could require use of the mark or at least an intention to use it in the UK.

Designs

Similarly to the situation for EU Trademarks, existing Registered Community Designs (RCDs) will also cease to be valid in the UK after it leaves the EU, but here again it is expected that transitional arrangements will be implemented to allow conversion of existing RCDs into corresponding national UK design rights.

Conclusions

It will be apparent from the discussion above that there are still many uncertainties in relation to the subject of IP rights after the Brexit, and that this will continue to be the case for quite some time. We will be monitoring the situation in the time to come and will post relevant updates as the situation develops.

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