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26 January 2017
Following UK Prime Minister, Theresa May’s speech of 17 January 2017 and subsequent comments, we now have greater clarity regarding the “bespoke” nature of the UK’s leaving of the European Union. There is no doubt, following her speech, that the intent of the UK executive government is that the UK will no longer be a member of the EU at the end of the Brexit process. As to the process, we already know the now famous, “Article 50” button is planned to be pressed before the end of March this year and an extendible 2 year time frame exists to complete negotiations.
In her speech Theresa May set out 12 objectives which will underpin negotiations to achieve “one big goal: a new, positive and constructive partnership between Britain and the European Union.” The objectives importantly include that Britain should be “the best place for science and innovation” which should ensure Britain continues to lead “cutting-edge research and innovation”. With regard to EU law now enshrined in the UK, she stated the objective number 1 is for certainty and clarity and that “as we repeal the European Communities Act, we will convert the ‘acquis’ – the body of existing EU law – into British law.”
Theresa May also stated, “We are leaving the European Union, but we are not leaving Europe.” and it should be borne in mind that much Intellectual Property legislation is internationally based, independent of the European Union, and will persist whatever the outcome of negotiations. Of particular note in this respect is the European Patent Convention (EPC) which is a supra-national agreement independent of the EU but comprising all 28 EU member states as well as 10 other European member states. This supra-national status is true also of the Unified Patent Court Agreement (UPCA), the Court for which is intended to open its doors for the first time in December 2017.
Withers & Rogers is a Euro-centric firm of IP attorneys, having colleagues who are nationals of many EU member states, with offices in Germany as well as the UK, and plans to expand further on the continent of Europe. The primary qualification of our attorneys is as European Patent, European Trade Mark, and European Registered Design Attorneys. Representation of all our clients will continue whatever the outcome of the Brexit negotiation process.
Below, we set out the impact of Brexit and certain forms of IP. For most sections, we consider the impact on your existing IP portfolio, new applications, and the scope of protection. In summary, and as we reported shortly after the Brexit referendum decision, there is minimal impact on IP and we are happy to confirm that it is “business as usual” for all our clients.
There is no need to do anything different with your current trade mark portfolio.
We recommend you follow your existing filing strategy:
Scope of Protection
Until Brexit occurs, your protection will be unaffected in the EU and provisions will be put in place post-Brexit for conversion or the like of the existing EU trade mark registration into EU and UK trade mark registrations. We will advise you further once the Brexit negotiations have been completed.
There is no need to do anything different with your current portfolio of Registered Community Designs in the EU.
We recommend you follow your existing filing strategy:
Scope of Protection
Until Brexit occurs, your protection will be unaffected in the EU and it is expected that transitional provisions will be put in place post-Brexit for recognition or ‘re-registration’ of existing EU designs in the UK. In the abundance of caution, UK focussed businesses may prefer to make simultaneous UK and EU registered design filings until the detail of such transitional provisions is known. We will advise you further once the Brexit negotiations have been completed.
Until Brexit occurs, your protection will be unaffected in the EU. Post-Brexit, UK businesses will no longer be able to rely on EU unregistered design right law. UK unregistered design right law will continue to apply but importantly this excludes protection for ‘surface decoration’ on an article. Registering your design continues to be the favoured option over relying on unregistered design rights and does provide protection for surface decoration.
Regardless it remains the case that unregistered design rights at both UK and EU level will continue to come into effect automatically and no action need be taken to secure these rights.
There is no need to do anything different with your current patent portfolio.
When it comes to payment of annuity or renewal fees in Europe, clients may wish to consider keeping individual countries for longer than previously since any increase in trade barriers between members states, and hence reduction in the free movement of goods in the EU, might suggest that some infringers may select individual members states for their products rather than the EU as a whole.
Hence, it might be beneficial to maintain UK patents longer to protect the UK market post-Brexit.
We recommend you follow your existing filing strategy. This applies whether your strategy is based for example on:
The EPO is not an EU body and will be unaffected by Brexit. As such your normal route for obtaining patents throughout Europe as well as elsewhere in the world should remain the same. This advice regarding prosecution of EPO patent applications is true in respect of obtaining a possible future Unitary Patent also - but see below (and our separate section on the UPP).
Scope of protection
The impact territorially of your patents is unaffected compared to current patent legislation. The principal European patent granting authority remains the EPO and the application and grant processes existing prior to 24 June 2016 are unchanged. We recommend you continue to obtain protection for your patents based on your existing strategies. Hence we advise clients that they at least obtain protection in the usual countries at the grant/national registration phase via the EPO.
However, clients may wish to consider extending patents at grant to cover the UK if they do not presently do so. This is because any increase in trade barriers between members states, and hence reduction in the free movement of goods in the EU, would suggest that some patent infringers may select individual members states for their products rather than the EU as a whole.
Hence, it might be beneficial to obtain (a greater percentage from your application portfolio of) UK patents to protect the UK market post-Brexit.
Interpretation of the legal scope of a patent remains the jurisdiction of national courts and is unaffected at present.
This package (described in more detail on our website here) is not yet in force but may do so in December 2017 which will be before Brexit occurs.
In order for the Unitary Patent to become available, the Unified Patent Court must come into effect. For the time being the UK is part of the EU and, if as currently expected the Unitary Patent becomes available before Brexit occurs, it will cover the UK.
The Unitary Patent could be adjusted to continue to cover the UK after Brexit by virtue of a further special agreement under the EPC. However, it will only make sense for this to occur if there is a single court that has jurisdiction for the whole territory of the Unitary Patent. Consequently, whether there will be Unitary Patents covering the UK after Brexit, is seemingly conditional on the UK remaining a member of Unified Patent Court coming into operation. In addition it is possible that the UK could maintain its place in the UPC but not in the UP. Should the UK leave the UP at any time or for any reason, it is expected that transitional provisions will be put in place for recognition or ‘dre-registration’ of existing Unitary Patents in the UK.
Copyright is largely governed internationally by the Berne Convention which is not affected by Brexit. Whilst there has been harmonisation under EU Directives these laws are expected to be seamlessly adopted in the UK at Brexit. As stated expressly by Theresa May on 17 January 2017, all existing legislation will be adopted at Brexit, such that there will be also no change in relation to Supplementary Protection Certificates or Regulatory Data Protection (RDP) for example.