Wed 16th Jan 2019

Brexit 'No Deal' - Your IP rights

Service: IP strategy

Sectors:

As you will be aware, the UK faces continued uncertainty over its relationship with the EU following Parliament's vote to reject the withdrawal deal. Nonetheless, whatever happens, your European intellectual property is safe with us.

Page White and Farrer is based in London and Munich. With our team of European, German, French and UK qualified patent and trademark attorneys, we will continue to provide a strong, one-stop service for all European IP.

 

No deal IP rights - what is known?

If the UK does exit the EU on 29 March 2019 and no deal has been agreed, what will happen to:

  • The European Patent Convention (EPC)? This a separate multilateral treaty not connected to the EU (various non EU countries like Norway, Switzerland, Iceland, Macedonia and Turkey are also members). The UK will remain a member of the EPC, and you will continue to be able to obtain UK and other European protection via the European Patent Office (EPO) route in the normal fashion. Any patents you have granted via this route will remain in force.
  • The future 'Unitary Patent'? Under the existing system, the European route provides only a central application procedure: if the EPO grants the application, then you still have to 'validate' in selected individual European states to get a patent there. You may have heard about the drive to create a 'unitary' EU patent covering most of the EU together in one patent without the need for individual validations. This is still in the pipeline (awaiting German ratification pending a constitutional challenge). If and when this will come into force is unknown. If it does come into effect after 29 March, the UK will not be a member. However you will still be able to apply for a patent centrally via the European Patent Office, then once granted have it validated as a simple formal matter in the EU and UK (and e.g. Switzerland, Norway, etc. if you so wish). We will continue to monitor the status of the German ratification and keep you updated.
  • EU registered trade marks and EU registered designs? These are EU institutions and, if the UK does leave on 29 March 2019, the UK will no longer be covered by EU registered trade marks and design rights. The government has confirmed that all existing EU registered trade marks and registered EU designs will continue to be protected and to be enforceable in the UK, by providing an equivalent trade mark or design registered in the UK. The new UK right will be provided with 'minimal administrative burden'. In respect of pending EU trade mark and EU design applications, owners will be able to refile, within nine months from exit, for a UK equivalent right using the normal application process at the cost specified in the UK fee structure. In respect of trade marks and designs filed through the Madrid and Hague systems which designate the EU, the government will work to provide continued protection in the UK after exit, but further details are not yet known. We will continue to monitor the situation and keep you updated.
  • Supplementary Protection Certificates (SPCs)? This is a European provision for extending the term of protection for patented pharmaceutical or plant treatments (to compensate for the extra time taken to get regulatory approval in these industries). The government has issued guidance saying that existing SPCs will be enshrined in national UK law. Again the mechanism and cost for doing this remain unknown, but we will continue to monitor the situation and keep you updated.
  • Exhaustion of rights? This refers to the present scenario whereby, once an article protected by IP has been (legitimately) sold in one European state, then IP rights cannot prevent it being imported into another European state. So far, the government has said it will continue to recognize exhaustion of rights for goods sold in an EU or EEA country then imported into the UK (i.e. so no additional royalty could be demanded for import from the EEA into the UK). However the EU has not given such a commitment in the other direction. We will continue to monitor the situation and keep you updated.

 

If you would like to know more please contact your representative here at Page White and Farrer, or call us on 020 7831 7929.

 

This briefing is for general information purposes only and should not be used as a substitute for legal advice relating to your particular circumstances. We can discuss specific issues and facts on an individual basis. Please note that the law may have changed since the day this was first published in January 2019.

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