As the news sinks in that the UK electorate has voted to leave the EU, we take stock and provide you with some early commentary on how this shift in the UK constitutional landscape might impact on intellectual property rights (IPRs).
First and foremost there is going to be no immediate change to the effectiveness, enforceability or validity of any registered or unregistered IPRs in the UK or EU. It is likely that for two years it will be business as usual. The UK has not yet left the EU and the terms of exit need to be negotiated (see here for more on the process). During the course of that negotiation there will be no change to the existing EU laws as they apply in the UK. These will continue to apply until the UK leaves, and where such EU law is already implemented into UK national law it will remain in place.
Even after the UK leaves there are some types of IPRs that will not be affected in any event. These are as follows:
- UK registered and unregistered IPRs. As national IPRs these will remain intact.
- European Patents, including European (UK) patents, obtained from the European Patent Office will remain intact and are not tied to membership of the EU.
IPRs that are pan-EU in nature will remain in place until the formal exit and thus most likely for at least two years from now. Their exact status after exit will depend on the outcome of the negotiations.
EU Trade marks (EUTMs) (previously Community Trade Marks) and EU registered designs (EURDs) will remain valid in the UK at least until the UK exits the EU. Thereafter EUTMs and EUDRs will no longer cover the UK. Separate national UK registrations will instead be needed. It is likely though that UK legislation will be made to convert the UK part of existing EUTMs/EUDRs into a UK national right so as to ensure no IPRs are lost.
If the UK were to negotiate to be a member of the European Economic Area (EEA) as opposed to the EU, which of course cannot be predicted, this could affect the extent of the changes needed to the UK IPR regime. For example, EEA membership could lend itself to keeping the status quo on EUTMs and EURDs and could even make it easier to stay within the UPC system discussed below. That said, this is crystal ball gazing and we will only know the outcome at the conclusion of any negotiations.
Question mark over the future of the Unitary Patent
Unlike the European Patent, the UK’s part in the Unitary Patent (UP) and the Unified Patent Court (UPC) is dependent on its membership of the EU. This means that the UK will no longer be involved unless this can be achieved through a process of negotiation. The UK will therefore not be covered by any granted Unitary Patent, and where UK coverage is desired a European or UK national patent will be needed instead. The Unitary Patent courts, which had been designated for London, will, assuming this result cannot be secured by negotiation, no longer be set up there.
The UP was originally planned to come into effect by mid-2017. It is now highly likely that this timescale will slip as a result of Brexit and the need for the rest of the EU to regroup and amend the UP Agreement to exclude the UK. For those clients planning and budgeting for UP registrations, now may be a good opportunity to reassess their strategies around pan-European patent protection.
We understand that there are people in the Commission, European Patent Office, and elsewhere, who consider that the CJEU opinion, which indicated that only EU member states could participate in the UPC, is wrong, or has been wrongly interpreted. If correct, this could mean that Switzerland (and now the UK) could participate even if outside the EU. We understand too that this position is being developed. There may still be time to work it through to bring the project of a court covering all relevant countries to fruition.
What should you be considering at this stage?
- Where are you currently using your EUTMs? If you are not yet using them in the UK and want coverage here under a conversion you may wish to start using them here soon.
- You may also wish to register UK IPRs now rather than awaiting the outcome of negotiations relating to European registered IPRs.
- Revise and think about any patent strategies that had been based on UK participation in, and the introduction of, the Unitary Patent and Unified Patent Court in mid-2017.
- Start thinking about any required changes to your contracts, or indeed how the terms of new contracts should be negotiated given the likely changes. Update agreements to ensure references to the UK are explicitly made as reliance on references to the EU alone may not be sufficient to cover the UK in certain contexts in future.