As is widely known, the United Kingdom shocked the world – and themselves – by voting No on the question of whether to remain part of the European Union in the referendum held in June 2016. The UK parliament subsequently formalised the intention of the UK to leave the EU by invoking Article 50 of the Treaty on the European Union in March 2017. This means that the UK is due to leave the EU at midnight on 30 March 2019 Central European Time – BREXIT is actually happening.

What does this mean for current pending applications & granted European patents and the protection provided in the UK?

It is understandable then that there is much trepidation within the UK as to the legislative changes that Brexit will require, particularly in the field of intellectual property and in relation to patents more specifically – not least in terms of what Brexit will mean for the European Unitary Patent and Unitary patent courts which have been in negotiations since 17 December 2012.

The good news for patent applicants and practitioners is that much of the current framework of intellectual property law will remain unchanged following the UK’s departure from the EU. International intellectual property agreements to which the UK is a party, including, for example, the Paris Convention and the TRIPS Agreement, exist outside of the EU and so will be unaffected by Brexit. Likewise, existing relationships between the UK and the European Patent Office are not a function of the EU and so will also remain unchanged after Brexit.

The European Patent Organisation provides one of the primary routes for patent applicants to file applications in Europe, typically with the assistance of European patent agents based across Europe, including in the UK. The EPO currently has 38 contracting states, ten more than the total number of members of the EU, and includes non-EU countries such as Norway, Switzerland and Turkey. The EPO is separate to the EU and accordingly will not be affected by Brexit.

The president of the EPO, Benoît Battistelli, issued a statement regarding the UK’s membership of the EPO post-Brexit, observing that the ‘outcome of the referendum has no consequence on the membership of the UK to the European Patent Organisation, nor on the effect of the European Patents in the UK’.

High-level representatives and experts of the EPO recently released a further statement that unequivocally provides Brexit ‘will have no effect on UK membership of the European Patent Organisation’ and that ‘European patent attorneys based in the UK will continue to be able to represent applicants before the EPO after the UK leaves the EU’.

What this means is that UK and non-European applicants can continue to apply to the European Patent Office for patent protection – which will include the UK. Existing European patents covering the UK are also unaffected. Effectively, there will be no difference to the manner in which non-European patent applicants interact with the EPO. Relationships between non-European applicants and their UK-based patent attorneys will also continue unchanged once the UK officially exits from the EU.

The standing of granted patents will also be unaffected by Brexit. Following grant and validation in the UK European patents have, and will continue to have, exactly the same legal effect in the UK as national patents granted by the UK Intellectual Property Office.

So will Brexit have any impact on the EP patent system?

Despite the positive news above, significant change does not come about without at least some ripples in the pond.

First, Supplementary Protection Certificates for pharmaceutical and plant protection products, which are based on underlying patents, are governed by EU Regulation and therefore will not automatically apply in the UK following Brexit. Specific new UK regulations and transitional legislation will need to be drawn up and enacted in order for the SPC protections to continue in the UK post-Brexit. Such regulations and legislation may draw similarities from presently existing non-EU SPC systems, such as those in Norway and Switzerland.

Second, the UK’s exit from the EU will remove the obligation on UK national courts to follow the decisions of the Court of Justice of the European Union, including any provisions in UK national law that have been derived from EU Directives such as the Biotechnology Directive (no. 98/44) and the IP Enforcement Directive (no. 2004/48). In respect of each of these Directives, necessary implementation into national law has already taken place, so a legislative gap in respect of their provisions should not emerge in the UK upon Brexit. The UK government’s intention is that EU directives such as these will remain part of the corpus of UK law immediately following Brexit – but also that the UK courts will no longer refer questions regarding the interpretation of these Directives to the Court of Justice of the European Union. It is therefore possible that over time there will be some divergence between the UK and the European Union in how such Directives are applied to questions of patentability and patent enforcement.

Brexit will also affect other intellectual property rights which will no longer be available post-Brexit, including: the Community Trade Mark (Regulation (EC) No 207/2009), Registered Community Designs (Regulation (EC) No 6/2002), Community Plant Variety Rights (Regulation (EC) No 2100/94) and Geographical Indications (Regulation (EU) 1151/2012).

For further information, please refer to the Fact Guide released by the UK Intellectual Property Office on 2 August 2016 and last updated on 16 March 2018.

What about the planned Unitary Patent System?

Brexit may well also have an impact on the UK’s participation in the proposed unitary patent and Unified Patent Court. Legal mechanisms have been proposed which would enable the UK still to participate in the Unitary Patent and the associated Unified Patent Court, even after Brexit, which may possibly include the proposed UPC seat in London. There would be clear benefits both to the UK and to the unitary system as a whole, but it would require political will on all sides to amend the current legal arrangements. The situation remains promising however, with the UK currently remaining as a signatory of the UPC Agreement after confirming its intentions to proceed with ratification on 28 November 2016 and secondary legislation was presented to the UK legislature in August 2017 (which is the final step preceding ratification).

If for some reason the ratification by the UK of the UPC Agreement is not forthcoming, then when unitary patents become available (which is an option when a regular European patent application is granted), they will only provide cover in EU countries and not in the UK after Brexit. However, as with other non-EU countries, it will still continue to be possible to obtain national UK protection via the current EPO route.

Also, if the UK is unable or unwilling to negotiate continued membership of the UPC system, then it will not be possible to include potential patent infringements in the UK with generalised pan-European proceedings brought before the UPC. Accordingly, patent applicants will need to continue to consider the UK as a separate jurisdiction in any patent litigation strategies, which notably is the current system as it stands today pre-Brexit and pre-commencement of the UPC system.

The Final Word

So, to cut a long story short, Brexit will have no effect on existing or pending patent rights recorded with the EPO and there will be no changes to the manner in which non-European patent applicants engage with the EPO, whether with the assistance of patent attorneys residing in the UK or elsewhere in Europe.

Brexit will, however, affect other intellectual property rights in the UK including Community Trade Marks, Designs & Please Breeder’s Rights and the effects of EU Geographical Indications. If you have IP rights that are likely to be affected, we encourage you to contact your attorney to discuss the implications of Brexit on your specific rights and to assist you to develop strategies for managing those rights.