Impact of UK ‘BREXIT’ referendum outcome on Patents, Designs and Trademarks in Europe

June 28th, 2016

What to expect after the british vote?

51.9% of British voters voted in favor of leaving the EU

Tuba Yamaç, patent agent & Johanne Auger, Partner and trademark agent

On Thursday June 23 2016, the UK voted in favour of leaving the European Union (EU). However, The UK’s departure will not be immediate. At the earliest, exit from the EU will follow a negotiation period of about 2 years from a formal notification to the European Council of the UK’s intention to leave the EU. The formal notification has not yet happened and it is not yet known when this will happen. Further, the government’s view is that the actual negotiation period is likely to be longer than the 2 year minimum.

In the meantime, during this negotiation period, the UK will remain in the EU and the current European patent, design and trademark systems will remain unaffected by the BREXIT vote. National patent, design and trademark protection in the UK will also remain unaffected.

Rest assured that no specific action is required at this time. We will continue to monitor the situation closely and advise you accordingly.

If and when the UK eventually leaves the EU:

  • Current European patents and patent applications will continue to cover the UK.

  • European patent attorneys based in the UK can continue to represent European patent application applicants.

  • Proposed EU-based Unitary Patent and Unified Patent system will likely not cover the UK. Delays to the start are expected.

  • EU-based IP rights such as Supplementary Protection Certificates, EU Registered Designs and EU trademark registrations will likely not cover the UK. Transitional arrangements are expected.

Current European patent system – no change

In short, there will be no change to the status quo with regard to the current European patent system (“Classical” patent system) under the European Patent Convention (EPC). European patents which have already been validated in the UK are unaffected.

Currently, European patent applications have the potential to cover 38 EPC contracting states, including the UK, and are administered centrally through the European Patent Office (EPO). Once a decision to grant a patent is obtained from the EPO, a validation step is necessary to make the European patent have an effect in the EPC contracting states in which protection is desired. In most of the EPC contracting states, validation is an administrative step requiring payment of a fee, possible translation of the claims or the specification into an official language of that EPC contracting state, and annual payment of renewal fees.

EPC contracting states are not tied to the EU. For example, Switzerland, Norway and Turkey are EPC contracting states but are not members of the EU. Therefore, an eventual exit from the EU is not expected to change the UK’s position as an EPC contracting state.

European patent attorneys based in the UK can still validly represent applicants of European patent application before the EPO. Therefore, with respect to the current Classical European patents and patent applications, it is business as usual.

“The Office underlines that the outcome of the referendum has no consequence on the membership of the UK to the European Patent Organisation, nor on the effect of the European Patents in the UK” - B. Battistelli, EPO President, June 24 2016.

“For now UK patent attorneys and registered trademark attorneys will still be able to perform the same work they do now, and UK and overseas IP owners will not lose any IP rights or any access to EU IP registration systems” - T. Rollins, CIPA President, June 24 2016.

Proposed EU-based Unitary Patent and Unified Patent system – changes are expected

Changes are expected with regard to the proposed Unitary Patent and Unified Patent Court (UPC) as the UP and UPC are linked to the EU. The UP will likely not cover the UK if the UK leaves the EU. The UK can still be protected through the Classical European patent or national UK patent systems, which both remain unaffected.

Furthermore, as one of the three branches of the Central Division of the UPC had been agreed to be based in London, further negotiation is now probable to amend the regulation to move the branch to a different location. This is expected to delay the start of the UP and UPC, which was planned to happen in around mid-2017.

“Concerning the Unitary Patent and the Unified Patent Court, the Office expects that the UK and the participating Member States will find a solution as soon as possible which will allow a full implementation of these so-long awaited achievements” - B. Battistelli, EPO President, June 24 2016

Supplementary Protection Certificates – changes are expected

Supplementary Protection Certificates (SPCs) provide patent term extension for medicinal, veterinary and plant protection products. As these are based on EU Regulations, and currently no equivalent UK based system exists, new UK legislation will likely be required to provide patent term extension after the UK leaves the EU, including possible transitional provisions. It is not yet clear whether any such legislation will follow the EU’s SPCs regulation or whether the UK will take the new legislation in a different direction.

EU Registered Design– changes are expected

EU Registered Designs (EURDs) provide protection for designs for up to 25 years across the EU. This system exists in parallel to national design right protection. EURDs are administered through EU-based regulations. Therefore, if the UK leaves the EU, EURDs will no longer cover the UK. Transitional provisions are expected for conversion of an EURD to a national UK design right. UK national design rights remain unaffected by departure of the UK from the EU. Applicants could also consider filing a separate design registration in the UK, parallel to any EURDs.

EU Trademark registrations – changes are expected

EU trademark registrations (EUTMs) provide protection for trade marks across all 28 member states of the EU. EU trade marks (EUTM) will not cover the UK after the UK leaves the EU. Transitional provisions are expected for conversion of an EUTM into a UK national right. UK national trade mark rights remain unaffected by departure of the UK from the EU. Applicants could also consider filing a separate trade mark application in the UK, in parallel to any EUTMs.

If you have any questions regarding the impact of the BREXIT vote on your IP portfolio or strategy, please get in touch with your usual contact at BCF LLP.