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29 October 2019
The UK began the formal process of leaving the EU on 29 March 2017. The date on which Brexit will have a legal effect on any IP rights will depend on the nature of any withdrawal agreements, transition periods or extensions that are agreed upon. Therefore the ‘date of legal effect’ of Brexit on IP is still unknown. However, the legal and practical changes that will follow such a date are now known and are summarised below.
A further extension of the so-called ‘Article 50 period’ was agreed in October 2019 and we do not expect the date of legal effect to be before 31 January 2020 (the ‘no deal’ scenario). If there is a further extension and/or if there is a ‘transition period’ (via a withdrawal agreement) there will be no legal effect of Brexit on statutory IP rights until the end of such periods. Whilst for some purposes the UK will be outside the EU during any agreed 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 date of legal effect?
The European Patent Convention (EPC) is not directly linked to the European Union. Itis 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.
As EU trade marks (EUTMs) are EU-wide rights, after the date of legal effect, 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 indicated that, even if there are no deals with the EU, they will enact legislation imminently that will provide for EUTMs that are in force at the time of the UK’s exit from the EU 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 date of legal effect, 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.
Like EUTMs, Registered Community Designs (RCDs) are EU-wide rights. After the date of legal effect, 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 indicated that, even if there are no deals with the EU, they will enact legislation imminently that provides for RCDs that are in force at the time of the UK’s exit from the EU 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 date of legal effect, applicants will need to refile a separate UK application in order to cover the UK. The UK Government has indicated that even if there are no deals with the EU, legislation will be enacted imminently 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 date of legal effect 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?
Although the launch of the long-awaited Unitary Patent Package (UPP) is currently being delayed by a German constitutional complaint, the UK has been continuing with the project since the EU referendum. Despite predictions in some quarters that the UK would withdraw from the agreement in the light of Brexit, the UK government has ratified the treaties behind UPP. Whilst it was originally envisaged that all UPP member states would be EU members, the UK has decided to continue to participate. The UK government 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”.
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.