On 23 June 2016, the UK carried out a referendum on its membership of the European Union (EU), and the public’s decision was that the UK should leave the EU. This note is to answer some of the initial questions that arise.
The first point to note is that no urgent action is needed. The UK’s exit from the EU (or “Brexit”) will not be immediate. At least a two year negotiation period will follow, leading to exit on a mutually agreed date. During this time, UK patent attorneys and registered trade mark attorneys will continue providing all of the services we currently provide, and IP owners will not lose any IP rights or any access to EU IP registration systems.
This note is intentionally brief, because there are some decisions still to be made. We will keep you informed of developments that relate to IP rights. Here is some information that we can give you immediately:
Will the Brexit affect my existing European patents?
No. The UK’s membership of the European patent system is independent of membership of the EU. Patent rights obtained via the European Patent Office will be unaffected, and there will be no loss of rights.
Can you still act for us in patent matters in the EU?
Yes. We will continue managing worldwide patent protection and risk assessments for all clients who require this. In particular, we will continue direct filing and prosecution of European, UK, German, and PCT patent applications. There is no question of our patent attorneys losing any right of representation at the European Patent Office (EPO), as the UK will remain a member of the European Patent Organisation.
What effect will Brexit have on the EU unitary patent?
There is expected to be a delay to the proposed EU unitary patent and Unified Patent Court. The proposals may change significantly. We will be monitoring developments.
What will happen to EU trade marks and Community designs?
EU trade marks and Community designs are ‘unitary’ rights for the entire EU. When the UK separates from the EU, additional UK trade mark and design applications will be needed unless the UK government implements new legislation to allow protection of such rights to continue in the UK.
We expect the EU registration system to continue to cover the remaining 27 member states, and it is likely that there will be some option to convert the UK part into a UK national right retaining the original application date enjoyed by the EU registration. Since this will require new legislation, it is likely to take considerable time to implement. We will keep you updated on any developments.
Can you still act for us in trade mark and design matters in the EU?
Yes. We will continue to advise you on the most appropriate way to protect your trade marks and designs now that we know the Brexit is going ahead. During this transitional period we will continue to represent you before the UK IPO, the EU IPO and in the filing of International Trade Mark and Design Registrations. We will update you when it is clear what will happen after the transitional period. We also continue to maintain close relationships with a network of overseas attorneys in the remaining EU member states.
Do I need to do anything immediately in relation to my existing EU trade mark and design registrations?
No – we recommend that you continue with your existing EU registrations until we understand how the UK parts of these registrations will transition into UK national rights. National UK filings are unlikely to enhance your rights unless you have no use of a trade mark in the UK. If you are concerned about a trade mark which is used in mainland Europe but not in the UK please contact us for further advice.
If I am filing new applications, should I file UK and European applications?
This is something that you should consider and we can advise on a case by case basis on the best filing strategy.
What about EU-focussed agreements with third parties?
The change in composition of the EU will affect agreements which have the EU identified as their geographical territory. This will include co-existence agreements with third parties as well as licensing arrangements.
We recommend that any agreements which have the EU as their territory be reviewed as soon as possible. Consideration should be given to renegotiating their terms to ensure that they continue to cover the UK when it ceases to be an EU member state.