5
European patents -
Unchanged
The European Patent Convention
(EPC) is not directly linked to the
European Union, but is instead a
multilateral treaty agreed by the 38
participating member states, and
likewise the European Patent Office
(EPO) is independent of the EU. This
means that the process of applying
for and obtaining European patents
will not change, regardless of the
UK’s eventual status if and when
Brexit is implemented. European
patent applications will still be filed
and prosecuted centrally at the EPO,
before being validated, once granted,
in the EPC member states in which
patent protection is desired.
Unitary Patent and Unified
Patent Court (Unitary Patent
Package) - Likely delay
The most immediate effect of the
referendum result may be on the
launch of the long-awaited Unitary
Patent Package (UPP), which will
create a European patent court and
a single Europe-wide patent. Most
commentators expected the Unitary
Patent (UP) and the Unified Patent
Court (UPC) to be up and running in
the first half of 2017. It was previously
envisaged that all UPP member states
would be EU members. The UK is
required to ratify the UPP before it can
commence. Consequently, the launch
may be delayed.
There is currently some political will,
not least in the UK, to press on with
launch of the UPP in its current form
and to seek to retain the UK as part
of the UPP even if it eventually leaves
the EU.
European Union registered
trade marks - Minor changes
As European Union trade marks
are EU-wide rights, once the UK has
left the EU, European Union trade
mark registrations will likely cease
to have effect in the UK, and any
new European Union trade mark
applications will cover only the
remaining EU member states.
It is highly probable that the UK
government will enact legislation that
will permit European Union trade
mark registrations that are in force
at the time of the UK’s exit from the
EU to be extended into the UK, either
automatically or on request, so that
pre-existing trade mark rights will not
be lost.
After the UK leaves the EU, in order
to obtain registered trade marks
covering the remaining EU member
states and the UK, it will be necessary
to file both a UK national trade mark
application and a European Union
trade mark application, either as
individual applications or through the
International trade mark registration
system. UK national trade mark
law is closely aligned with EU trade
mark law, in terms of the substantive
requirements for registration and the
protection conferred by a trade mark
registration, and also in terms of the
duration of trade mark registrations, so
aside from the inconvenience of having
to file a UK trade mark application
in addition to a European Union
application, trade mark holders should
not be disadvantaged by the change.
European Community
registered designs - Minor
changes
Like European Union trade marks,
European Community registered
designs are EU-wide rights. Once
the UK leaves the EU, European
Community design registrations
will cease to have effect in the UK,
and any new European Community
design applications will cover only the
remaining EU member states.
Again, it is highly probable that the
UK government will enact legislation
that will permit European Community
design registrations that are in force
at the time of the UK’s exit from the
EU to be extended into the UK, either
automatically or on request, so that
pre-existing registered design rights
will not be lost.
In order to obtain registered design
protection covering the remaining
EU member states and the UK post-
Brexit, it will be necessary to file both
a UK national design application
and a European Community design
application. The UK is expected to join
the Hague system for International
design registrations in 2016, so UK
and EU-wide design protection could
also be obtained by that route. As with
trade marks, UK national design law
is closely aligned with EU design law,
so aside from the inconvenience of
having to file a UK design application
in addition to a European Community
application, design holders should not
be disadvantaged by the change.
Conclusion
Intellectual property rights holders will
not see any immediate change as a
result of the UK’s vote to leave the EU,
and even once the formal process of
leaving the EU has been completed the
effects of Brexit will probably require
only small changes to European
patent, trade mark and design filing
policies.
We will of course continue to provide
updates on the implications of Brexit
on IP rights holders. As a European IP
firm with offices in both the UK and
continental Europe, we are ideally
placed to continue to assist our clients
throughout the world in obtaining and
defending the full range of IP rights in
Europe and elsewhere.
To find out more
contact Karl Barnfather
