Brexit and IP - some frequently asked questions

Duncan J Morgan and Catherine Jewell | February 2018

We have developed a series of FAQs to summarise the situation for IP protection in the UK and Europe after Brexit.

1) What is Brexit?”

In June 2016, a referendum was held in which the electorate decided that the UK should leave the European Union (EU).  In March 2017, the UK government sent formal notification to the EU of its intention to withdraw from the organisation, beginning a process of negotiation, with the UK not expected to leave the EU before March 2019 at the earliest.

2) “Has the UK left the European Union?”

No, at present the UK is still part of the EU.  We are currently in a 2 year negotiating period during which the framework of the future relationship between the UK and the EU is being discussed, currently due to expire in March 2019.  However, both the UK and EU have indicated that they favour a further transition period until at least the end of 2020, during which EU law will still apply in the UK.  An announcement on the transition period is expected later in 2018. 

Therefore, until at least March 2019 (though likely until December 2020), the UK is still part of the EU and the existing laws and systems in respect of Intellectual Property remain unchanged.

3) “Will businesses need to re-file their patents in the UK, once the UK leaves the EU?”

No – patent protection in respect of the UK is obtained either directly through the UK Intellectual Property Office (UKIPO), or through the European Patent Office (EPO), which is not an EU institution.  Therefore, the status of existing UK and European patents and pending applications will not be affected by the UK’s exit from the EU.

For future applications, it is also important to note that the existing systems for applying for patents in respect of the UK will not be affected.  This means that you can continue to pursue patent protection in respect of the UK by:

(i) applying for a UK patent through the UKIPO;

(ii) applying for a European Patent through the European Patent Office and then validating your European Patent in the UK after the European application is granted; or

(iii) filing an International (PCT) Patent Application and then pursuing this via the UKIPO or the EPO as in (i) and (ii) above, at the appropriate stage.

4) “What is the position as regards the EU switching to the Unitary Patent Scheme, which I understand will enable any party to obtain a single patent effective in all EU member states?” 

Firstly, it should be made clear that the Unitary Patent Scheme (more commonly referred to as the "Unitary Patent Package") is a proposed new system which will provide an alternative to a specific part of the system that is currently in operation at the European Patent Office.  It is not a replacement for the existing system.

At present, when a European patent application is granted by the EPO, the proprietor then selects the Contracting States in which to "validate" the granted patent, resulting in a "bundle" of rights, i.e. a number of independent national patents which stand or fall individually and are enforced or challenged through the relevant national court systems.

Once the Unitary Patent Package is in force, however, when a European Patent Application is granted the proprietor will have a choice with regard to how they cover certain countries.  Specifically, they will be able to choose between:

(i) requesting “unitary effect” in order to obtain one, single, indivisible patent which covers all of the EU-countries which are also Contracting States of both the European Patent Convention and the Unified Patent Court Agreement (this "unitary patent" would be enforced or attacked in respect of all of those countries through a single court – the Unified Patent Court); or

(ii) selecting one or more of these countries in which to individually "validate" their patent under the existing system, providing a number of independent patents which are enforced or challenged individually through the relevant national court systems.

Not all EU member states are participating in the Unitary Patent Package – Spain, Poland and Croatia do not participate.  In addition, the European Patent Convention includes countries which are not at present members of the EU, for example Iceland and Norway, and these countries are not part of the Unitary Patent Package either.  Thus, for these countries, the existing "validation" process will remain in use for obtaining patent protection via a European Patent Application at the EPO.

5) “Will British people and businesses be excluded from this unitary patent?”

No.  We fully expect that British applicants and proprietors will be able to obtain a unitary patent by requesting unitary effect upon grant of their European patent application, the same as applicants and proprietors of any other nationality.

However, it is possible that a UK exit from the EU would mean that the revised Unitary Patent Package could not and would not include the UK.  This would not affect use of the system by UK nationals, but it would mean that a Unitary Patent would not cover the UK. 

In other words, to obtain UK patent protection via a European patent application through the European Patent Office, the existing "validation" system would continue to be the route at grant.  This would also mean that all UK patents would continue to be enforced or challenged through the UK Courts.

There are questions surrounding the future of the entire Unitary Patent Package in the light of a UK exit from the EU.  It is not clear at present whether, and in what form, the Unitary Patent Package would come into effect without the UK.  It is also not clear whether it might be possible to negotiate for the UK to remain part of the Unitary Patent Package despite leaving the EU.

6) “Will businesses need to re-file their trade marks in the UK, once the UK leaves the EU?”

UK Trade Mark Registrations will not be affected if the UK leaves the EU.  Likewise, rights accrued through use in the UK (such as goodwill which could be relied upon in an action for "passing off") which are based on English common law would not be affected.

The situation for EU Trade Mark Registrations is different, because these are single rights, covering the whole of the EU.  This means that, following a UK exit from the EU, existing EU Trade Mark Registrations will no longer give protection in the UK (unless the Brexit negotiations between the UK and EU result in the parties deciding otherwise).

However, both the UK and EU authorities have indicated that they fully expect transitional provisions will be put in place so that proprietors of EU Trade Mark Registrations (or EU designations of International Registrations) all over the world avoid a loss of rights, most likely with holders of existing EU registrations being given a corresponding UK registration at the time the UK eventually leaves the EU. 

Of course, existing EU Trade Mark Registrations will continue to cover the remaining 27 EU Member States.

The UK is a member of the International (Madrid) Trade Marks System, and use of this system by UK businesses and nationals would not be affected by the UK’s exit from the EU.

7) Will businesses need to re-file design rights in the UK, once the UK leaves the EU?

UK Design Rights, both registered and unregistered, will not be affected by the UK’s exit from the EU.

However, for Registered Community Designs (RCD), the position is expected to be very similar to that of EU Trade Mark Registrations outlined above.  In brief, existing RCDs will cease to apply in the UK, and applications for new RCDs will no longer cover the UK (unless the Brexit negotiations between the UK and EU result in the parties deciding otherwise).

However, both the UK and EU authorities have indicated that they fully expect transitional provisions will be put in place so that proprietors of RCDs can avoid a loss of rights, most likely with holders of existing RCDs being given a corresponding UK registration also at the time the UK eventually leaves the EU. 

For those who currently are relying on Community Unregistered Design Rights, now would be a good time to consider obtaining registered protection.  

The UK government agreed in principle to become a member of the Hague International Design System in January 2016, and on the assumption that this is achieved before the UK exits the EU then there would be no change in relation to the ability of UK companies or citizens to apply for or own International Designs.

8) “Will I have to be an EU Citizen and/or Resident of an EU Country to apply for EU IP Rights?

No – residence or nationality does not have any effect on whether or not an applicant is entitled to own European IP Rights.  This will not change.  UK citizens and residents will continue to be able to apply for European Patents and International (PCT) Patents, as well as applying for patents in the UK and elsewhere in the world.  Likewise UK citizens and residents will continue to be able to apply for EU Trade Mark Registrations and EU Registered Designs through the EUIPO.

9) “Will Beck Greener, as my British Patent or Trade Mark Attorneys, still be able to represent me if the UK leaves the EU?”

Yes – Beck Greener will continue to represent clients before the European Patent Office and the European Intellectual Property Office when a UK exit from the EU takes effect.