Patents will not change, unlike EU trade marks and EU registered designs

The UK is set to leave the European Union on 31 October 2019 (‘Exit Day’). However, the UK will continue to be party to fundamental IP treaties and conventions, that is, the UK will remain a member of the Patent Cooperation Treaty (PCT) as administered by WIPO, and the European Patent Convention (EPC). The European Patent Office (EPO) is governed by the EPC, which is an international intergovernmental treaty. It is not related to the European Union (EU) and changes to the relationship between the UK and EU do not affect the EPC. There are currently 38 member states of the EPC—10 beyond the 28 members of the EU. Note that this is not the case with the EU Intellectual Property Office (EUIPO), which grants applications for EU trade marks and EU registered designs and is limited to EU member states only.

If there is a “no-deal” Brexit how quickly must we act? A “no-deal” Brexit does not mean chaos for your IP rights in the UK and in the EU. Some planning and organisation will allow for a smooth transition for trademarks and designs. There is no impact on patents. From our offices in the United Kingdom, Germany, and The Netherlands, along with our US liaison office, Kilburn & Strode’s European IP attorneys are qualified for EU and UK matters and can guide you during the Brexit process.

What about payments of annuities and other official fees? All official payments to the EPO and the EUIPO will continue exactly as in the past, whether you paid directly, via Kilburn & Strode as your attorneys, or via a third-party annuity service provider. We would be delighted to carry out this work for you.

So, we don’t need to use a firm in the EU for post-Brexit IP work? Regardless of the final rules set in place after Brexit, attorneys currently qualified before the EPO will remain so-qualified and of course UK IPO qualifications for UK-based attorneys are unaffected. For the EUIPO the situation is more complicated, however, our EU-based attorneys who are qualified before the EUIPO and in EU jurisdictions will remain so qualified.

How will Brexit affect Supplementary Protection Certificates (SPCs)? The UK will preserve current EU laws, such as the law governing SPCs, as national law. A 2018 technical notice explained that all existing rights and licences will remain in force and thus the SPC application and grant process will likely not change significantly.

Will ongoing disputes be affected? It is not known to what extent judgments from the Court of Justice of the European Union will act as precedent for IP matters in the UK. Judgments that went beyond the text of the directives, and the actual language that appears in the UK statutes, will possibly no longer be followed and become irrelevant in the UK post-Brexit.

Ongoing disputes in both the UK IPO and UK Courts that began before Brexit will continue to their conclusion. If you have concerns regarding an ongoing or future dispute, contact your usual Kilburn & Strode advisor or email insights@kilburnstrode.com.

What about the Unitary Patent and the Unified Patent Court (the UPC Agreement)? As of mid-2019, 16 EU member states (including the UK) have ratified the convention related to the new pan-European patent (Unitary Patent) and pan-European patent court (Unified Patent Court). The EPO, which is not an EU institution, would administer both the granting of these patents and the courts. All that remains for the new system to take effect is the required ratification by Germany (although ratification is currently under consideration by the German Constitutional Court). IP owners would not be able to use the Unitary Patent system to protect their inventions within the UK, and it is unclear whether post-Brexit rulings by the new court would or would not be enforceable within the UK. The UPC Agreement, once enacted, will be available to protect inventions within the 25 (of 28) EU member states that have joined, but rights holders will still be able to obtain equivalent UK patents (enforced in UK courts) to protect their inventions in the UK from either European patent applications designating the UK filed at the EPO, or UK national patent applications filed at the UK IPO - exactly the system in place today.

How will trade marks and trade mark applications be affected? After Brexit, holders of existing registered EUTM rights will have their rights automatically cloned by the UK IPO to create corresponding UK registered rights. This requires no input from the holder for registrations, while retaining filing, priority and seniority dates. Pending EUTM applications will be able to obtain the cloned right, but the applicant must apply to the UK IPO.

For existing rights, systems with effective renewal strategies can be used advantageously to save on short-term costs.

How will Brexit affect the exhaustion of rights (“first sale doctrine”) and free movement of goods? When the UK leaves the EU, it may also leave the EEA (European Economic Area) free market, and the EEA exhaustion regime. As it stands, there will be asymmetric exhaustion of rights depending on whether the first sale is into the EEA or the UK. The UK government will recognize exhaustion of rights for goods sold into the EEA, but goods sold in the UK first and then sold in the EEA may face objections from rights holders. The position regarding exhaustion of rights is very much in flux and may be industry specific. Thus, we recommend seeking further guidance on these matters. More information can be found here.