Brexit update (October 2019)

IP Rights in the UK Post-Brexit (October 2019 Update)

Brexit – current status

The UK is scheduled to leave the EU on 31 October 2019.  A withdrawal agreement between the UK and the EU has been agreed in principle, however this must be approved by the UK Parliament.  It appears unlikely that the agreement will be approved before 31 October 2019, meaning that either an extension to the exit date will need to be granted, or the UK will leave the EU on the exit date with “no deal”.

Ultimately, the impacts on IP, whether a withdrawal agreement is approved or not, are largely the same.  An approved withdrawal agreement will generally only delay the changes resulting from Brexit as compared to a no deal Brexit.

Patents

Current European Patent System

There will be no change to the current European patent system.  European patent applications will continue to cover the UK exactly as they do now.

The European Patent Office (EPO – the body of the European Patent Organization responsible for the granting European patents) is not an EU institution.  The European Patent Convention (EPC – the statute governing the granting of European patents) is not EU law.

UK Patent Attorneys will continue to have full rights to represent applicants from throughout the world and to file and prosecute European Patent Applications

Unitary Patent System

The proposed Unitary Patent System, if it comes into force, will introduce a Unitary Patent (granted by the EPO), which will be effective across all participating member states (as though they were a single country).  The Unified Patent Court (UPC) is a supranational court that will cover all participating member states in a single action.  It will have sole jurisdiction over Unitary Patents.

It is currently unclear whether the Unitary Patent System will come into force and, if it does, whether the UK will participate.

In the event the UK does not participate in the Unitary Patent System, patent protection in the UK via a European patent application would be achieved precisely as it is now.

Trade Marks and Designs

Registered EU Trade Marks and Registered Community Designs

In the event of a “no deal” Brexit, all existing Registered EU Trade Marks and Registered Community Designs will be granted an equivalent or comparable trade mark or design registration in the UK.  This “cloning” process is being carried out by the UKIPO at no cost.  No registered trade mark or design rights in the UK will be lost.

The same process will be carried out for International Trade Mark Registrations and Design Registrations that have designated the EU via the Madrid Protocol.

Owners of Registered EU Trade Marks and Registered Community Designs who do not want a comparable UK registration will have the option opt out.

Pending EU Trade Mark and Community Design Applications

EU Trade Mark Applications and Design Applications that are pending on the date of exit will not be automatically cloned.  

Instead, there will be a nine-month period from “exit day” for the proprietor of a pending EU application to file a new UK application.  Provided the UK application is filed within that nine month period then the UKIPO will recognise all filing dates and claims to earlier priority and UK seniority (where applicable for Trade Marks) attached to the existing pending EU application.

Applicants will not be notified of the nine-month period.

Withdrawal Agreement

If a withdrawal agreement is approved, the same procedures referred to above will apply.  However, an agreement will provide a transition period, which will expire on 31 December 2020 at the earliest, though this may be extended.

The cloning of existing EU Trade Mark and Design Registrations will take place during the transition period.

The nine month period for filing a new UK Trade Mark or Design applications will commence from the end of the transition period.

Renewals

UK trade mark or design registrations resulting from the cloning of corresponding EU registrations will need to be renewed independently.  The UK registration will retain the renewal date of the corresponding EU registrations.

For any comparable UK registrations that expire within the six months after the date of Brexit, the UKIPO will send a reminder on the actual date of expiry (or as soon as is practicable after that date) that informs the owner of the expiry and sets a six-month renewal window running from the date of the notice.  Renewal of the registration within this window will not be subject to an additional late payment fee.

Where the renewal date falls after exit day, early payment of the renewal fee at EUIPO, on a date prior to exit day, will have no effect in respect of the corresponding UK registration.  Therefore, there is no benefit in the early renewal of Registered EU Trade Marks or Registered Community Designs.

Any Registered EU Trade Marks or Registered Community Designs that expired in the six months prior to the date of Brexit will also be cloned into comparable UK registrations. Where the corresponding EU registration is subject to late renewal at the EUIPO, that late renewal will also have effect on the comparable UK registration.

Advice

Rights attached to Registered EU Trade Marks or Registered Community Designs will not be lost due to Brexit.

Holders of applications which remain pending on the date of Brexit should take care to ensure corresponding UK applications are filed within the nine-month window, if protection in the UK is required.

However, care should be taken to identify any Registered EU Trade Marks or Registered Community Designs that fall due for renewal around the date of Brexit to ensure that the registrations are correctly renewed.

If you would like more detailed information on any of these issues, or would like to discuss strategies for managing any IP rights in the UK following Brexit, please contact one of our attorneys.