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Brexit: Impact on IP in Europe

15 January 2020

The UK will formally leave the EU on 31 January 2020 but under the terms of the Withdrawal Agreement agreed between the UK and the EU this will commence a transition period until at least 31 December 2020.

There will be no legal effect of Brexit on statutory IP rights until the end of the transition period. Whilst for some purposes the UK will be outside the EU during the transition period, all EU IP law will continue to cover the UK in the same way that it does now, with all the rights and obligations that entails.

What will happen to my IP rights after the transition period?

1. European patents – Unchanged

The European Patent Convention (EPC) is not directly linked to the European Union. It 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 the process of applying for and obtaining European patents will not change at all. 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.

2. European Union Registered Trade Marks – Continued Protection

As EU trade marks (EUTMs) are EU-wide rights, after the transition period, these rights will cease to have effect in the UK, and any new European Union trade mark applications will cover only the remaining EU member states.

The UK government has passed legislation that will provide for EUTMs that are registered at the end of the transition period to be extended into the UK. As a result of this, pre-existing trade mark rights will not be lost and their owners will be granted new “cloned” UK registrations free of charge.

After the transition period, 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 an EU trade mark application, either as individual applications or through the international trade mark registration system. UK national trade mark law is based on EU trade mark law, so aside from the inconvenience of having to file, and renew a UK trade mark application in addition to a European Union application, trade mark holders should not be disadvantaged by the change. There will be changes to the rules of representation at the EUIPO and, possibly, later changes at the UK’s IPO. Withers & Rogers, with offices in both the UK and continental Europe, will continue to represent in both jurisdictions and these changes will have no effect on our clients.

3. European, Registered Community Designs – Continued Protection

Like EUTMs, Registered Community Designs (RCDs) are EU-wide rights. After the transition period, European Community design registrations and EU designations of International Hague designs will cease to have effect in the UK, and any new RCD applications will cover only the remaining EU member states.

Again, the UK government has passed legislation that will provide for RCDs that are registered at the end of the transition period to be extended into the UK, so that pre-existing registered design rights will not be lost. These new “cloned” UK registrations will be granted free of charge.

In order to obtain registered design protection covering the remaining EU member states and the UK after Brexit, it will be necessary to file both a UK national design application and an RCD application. The UK joined the Hague system for international design registrations in March 2018, so UK and EU-wide design protection could also be obtained by that route. As with trade marks, UK national design law is based on EU design law, so aside from the inconvenience of having to file, and renew, a UK design application in addition to a European Community application, design holders should not be disadvantaged by the change. Again Withers & Rogers will continue to provide representation, and expertise, before both the EU IPO and the UK’s IPO.

What will happen to any pending EU Applications?

For applications of EU trade marks or designs which are still pending at the end of the transition period, applicants will need to refile a separate UK application in order to cover the UK. The UK Government has passed legislation allowing applicants a nine-month window to file a UK application and still keep the filing and priority dates of the pending EU application. Some applicants might prefer to file both UK and EU applications before the end of the transition period to avoid any possibility of having to refile pending applications, and discounted rates are available for doing so.

Will the UK be able to participate in the unitary patent system and Unified Patent Court after Brexit?

The launch of the long-awaited Unitary Patent Package (UPP) is currently being delayed by a German constitutional complaint. The UK continued with the project after the EU referendum and the UK government proceeded to ratify the treaties behind UPP. The UK government previously indicated in its White paper in July 2018 that it “intends to explore staying in the Court and unitary patent system after the UK leaves the EU” but more recently, in February 2020, a government spokesperson stated, “the UK will not be seeking involvement in the UP/UPC system”.

Regardless of the eventual outcome, Withers & Rogers will have the right to seek Unitary Patents via the European Patent Office and to represent clients before the Unified Patent Court.

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.

Who should I contact for advice?

For specific advice about how the legal effect of Brexit might affect you or your IP strategies going forward, please contact your usual attorney.

 

Richard Worthington
Designs group