BREXIT & PATENTS, TRADEMARKS and DESIGNS

 

As you know, the United Kingdom is no longer part of the European Union (EU) since February 1st, 2020. A transition period had been established from the period February 1st, 2020 to December 31st, 2020 to notably discuss the continuity of protection of intellectual property rights in the EU.

The following provides a summary of the main consequences of Brexit that apply since January 1st, 2021 for patents, trademarks and designs, in the EU.

BREXIT and PATENTS

  • Basic patent law in the UK will not change following Brexit. The UK continues to be a contracting state to the European Patent Convention (EPC). In other words, it will still be possible to obtain a European patent designating the United Kingdom. The UK Intellectual Property Office continues to grant UK national patents just as before.
  •  However, EU law which governs the regime for supplementary protection certificates (SPCs) for pharmaceutical products and agrochemicals does not apply anymore in the UK. The relevant EU legislation is nonetheless retained in UK law. In time the legislation governing the grant of SPCs in the UK may be amended but it is not anticipated that there will be any significant changes in the short term. However, requests for SCPs in the UK cannot be based anymore on a Market Authorization granted by the European Medicines Agency. It will be necessary to base such requests on a MA granted by the UK.

 The newly introduced EU law - July 2019 - regarding the SPC manufacturing waiver has not been fixed into the UK Patents Regulations, and therefore does not apply.

  • Regarding disputes, the current patent litigation system also continues as before. 
  • However, the Unified Patent Court proposal (UPC) will be impacted. The Unified Patent Court Agreement was made in 2013 but has not yet entered force, as this depends on ratification of the Agreement by Germany.

Although the UPC Agreement is technically not an EU instrument, it envisages that the participating countries will be EU member states and that the UPC will give primacy to EU law.  It is therefore far from clear whether it will be politically and legally possible for the UK, which has ratified the UPC Agreement, to participate to the UPC. The UK has stated that it is committed to exploring whether it will be possible to participate in the UPC and associated unitary patent system. Should the UK withdraw from the UPC Agreement, the remaining countries will need to decide whether to proceed without the UK with the establishment of the new court and litigation system.

 

BREXIT and TRADERMARKS AND DESIGNS

  • Registered EU trademarks and designs and registered International trademarks and designs covering the EU on December 31st, 2020

These trademarks and designs, registered prior to December 31st, 2020, are now treated as if they had been applied for and registered under the UK law. Indeed, these rights have been cloned automatically and freely onto the UK register, and have now become UK national rights.

These UK rights are completely independent from their original EU right, but retain the same filing, priority or seniority dates. The period of protection of the UK rights created will be at least equal to the remaining period of protection under the EU law. Please note that no new registration certificate will be issued by the UK Office.

These UK trademarks and designs retain the same renewal date as the original rights to which they originate from. Therefore, these rights will have to be renewed, before the UK Office, at the expiration date.

Please note that since January 1st, 2021 you have the choice to waive this UK right through an 'opt out' system (renunciation of UK right equivalence), in case this territory is not relevant for you.

  • Pending applications for EU trademarks and designs and pending applications for International trademarks and designs covering the EU on December 31st, 2020

These trademarks and designs applications that were still pending or under examination, before the EUIPO, on December 31st, 2020 were not cloned onto the UK register.

However, it is possible to file a corresponding UK trademark rights or designs, provided that they are identical, in all aspects, to the original applications.

This filing has to be done before September 30th, 2021 in order to retain the filing and/or priority date of the original EU application.

This filing will be subject to a full examination (including distinctiveness and publication for opposition) and the payment of UK national filing fees.

  • Registered EU trademarks and designs and registered International trademarks and designs covering the EU expiring after January 1st, 2021

In case the renewal date of a trademark or design is after December 31st, 2020, this right has to be renewed before the EUIPO and the UK Office, within the time limit. Indeed, the EUIPO no longer automatically covers the territory of the United Kingdom, which must therefore be designated in addition, if you wish so.

If so, it will be necessary to pay the official fees to the EUIPO and the UK Office.

For your complete information, a renewal done before December 31st, 2020 for a trademark or design which expires after January 1st, 2021, does not avoid renewing this right before the UK Office and the required payment of official fees.

  • Agreements and other aspects

For agreements which contain an intellectual property clause, it is necessary to mention the United Kingdom in addition to the European Union among the territories covered, if you hold rights in that territory.

Other questions regarding the use, reputation, records of transfers of assignment or licence can be considered, therefore do not hesitate to ask and we will get back to you with an individual answer.

The NONY team remains at your disposal should you need any additional information.

 

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.