News & Resources
UK IP Position and Developments Since Brexit
It has been two years since the UK voted to leave the EU. Brexit negotiations are in full swing and the UK is currently scheduled to leave the European Union in March 2019. Until then and possibly longer, UK businesses can continue to protect their IP rights EU-wide (including the UK). Although there is uncertainty in a range of areas including the intellectual property system within the UK, this will not affect the services we provide. However, below we explain the possible effects on each type of European intellectual property.
On 19 March 2018, the European Commission published its Brexit paper titled “Draft Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community.” The text has a section on IP and is especially interesting for the proprietors of EU IP rights because this may suggest the position ultimately agreed. The European Commission’s draft text proposes a transition from 30 March 2019 until 31 December 2020. On 26 June 2018, the EU (Withdrawal) Act 2018 (‘the EUWA’) received royal assent.
The EPO is not an EU institution and therefore Brexit has no effect on the UK’s membership of the EPO. UK-based patent attorneys will continue to be able to file and prosecute European patent applications without any change. This includes the ability to handle opposition proceedings. Thus, our day-to-day work and capabilities will be entirely unaffected.
The consequences of the UK leaving the EU on the introduction of the unitary patent (UP) and unified patent court (UPC) are not yet known. Although on 26thApril 2018 the UK ratified the UPC agreement, uncertainties remain on this new system due to a pending constitutional case in Germany and final Brexit negotiations.
It is important to recognise that UK-based European patent attorneys will be able to obtain unitary patents and to represent their clients at the UPC – this will not be affected by the UK leaving the EU or whether the UK is a member of the UPC agreement. This means that even if the UPC does come into force at some future date, we will be able to offer the same services that we would have done if the UK had voted to remain in the EU.
In summary, Brexit will not affect the capabilities of UK-based patent attorneys and how we can assist our patent clients.
Trade Marks & Designs
Unlike the EPO, the EUIPO is an EU institution and thus the UK’s membership of the EUIPO will be affected by Brexit. When the UK leaves the EU, as it currently stands, it will no longer be possible to obtain protection in the UK by filing an EU trade mark or design application.
The government is considering various options and discussing the best way forward with users of the system. When the UK has left the EU, UK businesses will still be able to register an EU trade mark (EUTM), which will cover all remaining EU Member States. In addition, the UK is a member of the international trade mark system (Madrid protocol). This allows businesses to file one application and pay one set of fees to protect trade marks in up to 113 territories including the EU.
Once the UK leaves the EU, UK businesses will still be able to register a Community Design (RCD), which will cover all remaining EU states. The government has recently ratified the Hague Agreement to join the Hague System for the International Registration of Industrial Designs. This will allow businesses for registration of up to 100 designs in over 66 territories through filing one single international application.
All EUTMs or RCDs that are registered before the end of the transition period will automatically be cloned into an equivalent UK right with the same filing and priority dates and with no examination required. Unregistered Community design rights will be cloned too. This implies that the new right will provide the same level of protection in the UK as the parent right in the rest of the EU.
It is worth noting that pending applications will not be automatically cloned, and instead there will be a nine month re-filing period after the expiry of the transition period. As it currently stands, that means right holders will have until 30 September 2021 to refile a pending EUTM, RCD in the UK if they wish to retain the priority date of the original EU application. Therefore, there seems to be no urgency for businesses to double file in both the UK and EU for those EUTM applications for the time being.
We will keep our clients updated on transitional provisions for existing EU trade mark and design rights as they are put in place, to ensure that our clients’ rights remain in force in the UK under the new arrangements.
We will be sure to keep our clients informed of further developments. If you have any questions on Brexit and the likely effects on your business, please contact Andy Cloughley at email@example.com.