Changes after Brexit
The United Kingdom (UK) left the European Union (EU) on 31 January 2020, so reflection is needed on the effect on European patents, designs and trademarks as the UK ceases to be an EU member state.
Impact on European patents and patent applications
The patenting procedure itself will not change. In fact, the different agreements which form the basis of the relationships between the European Patent Office and the UK exist outside of the EU and thus are unaffected.
Accordingly, it will remain possible to file a patent application through the European Patent Organisation designating the UK and this procedure remains unchanged (in fact there are other non-EU countries member of the EPC, such as Switzerland and Norway). Existing European patents covering the UK are also unaffected. After validation in the UK, the European patent will continue to have the same legal effect as a national patent granted by the UK patent office.
The change will mainly affect procedures occurring after grant. For instance, Supplementary Protection Certificates for pharmaceutical and plant protection products, are based on EU Regulation, which will not continue to apply in the UK. The Patents (Amendment) (EU Exit) Regulations 2019 (“the Patents Regulations 2019”) will come into effect (after the transition period expiring on 31 December 2020). The UK patent office however has indicated that these regulations will bring current EU legislation into UK law as far as possible, to maintain current systems and processes
Also, the UK national courts will no longer have the obligation to follow the decisions of the Court of Justice of the European Union. The UK government has indicated that provisions that are currently 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), will remain UK law. However, the UK courts will no longer refer questions regarding the interpretation of these Directives to the Court of Justice of the European Union. Thus, it is possible that the UK will start to apply these directives differently from the countries in the European Union.
Impact on European trademarks and designs
EU trademarks and registered community designs are processed by the European Union Intellectual Property Office (EUIPO). Unlike the EPO, the EUIPO is not independent of the EU.
The UK’s departure from the EU will impact European trademarks and designs but there is a transition period during which all EU laws and procedures remain in place in the UK. Unless extended by mutual agreement, this transition period is scheduled to end on 31 December 2020. In the meantime, nothing changes in relation to IP rights granted through the EUIPO.
IP rights granted by the EUIPO will be extended into the UK registers after 31 December 2020, Pre-existing trademark and design registrations will not be lost; their owners will be granted new “cloned” UK registrations free of charge. Pending applications, however, will not automatically be extended to the UK Registries but may be re-filed in the United Kingdom during a nine-month period after 31 December 2020 while retaining filing and priority date.
After 31 December 2020, in order to obtain new registered trademarks and designs covering the remaining EU member states and the UK, it will be necessary to file both an EU trademark or registered community design application and a UK trademark or design application, either as national applications or through the International Systems of Madrid resp. The Hague.
We will provide regular updates on the implication of Brexit on IP rights holders.
In case of any questions, please do not hesitate to contact De Clercq & Partners.