Brexit and IP: An Update

IP CHANGES TO EXPECT FOLLOWING BREXIT

After months of uncertainty, it is now clear that the UK will leave the EU at 11pm on 31 January 2020. But what does this mean for intellectual property right holders? This article provides a brief summary with some key take-home points for right holders.

Brexit and IP: An Update

There has been much discussion over the past few years on the effect of Brexit on intellectual property rights within the UK. The precise outcomes were, for a long time, unknown due to the uncertainty regarding the type of Brexit that would be delivered.

It is now clear that the UK will leave the EU at 11pm on 31 January 2020 and will enter a transitional period that will last until 31 December 2020.

For intellectual property right holders, very little will change on 1 February 2020 as the transitional period ensures continuity of existing regimes.

Although what lies beyond the end of the transitional period is subject to negotiations between the UK and the EU, it currently seems clear how EU-wide intellectual property rights will be dealt with. It is expected that following 1 January 2021, the provisions prepared in readiness for a "No-Deal" Brexit will enter into effect (unless an alternative agreement is reached in the meantime).

A summary of the expected changes for 2021 and key points for right holders to note are provided below.

Patents, the Unitary Patent Court (UPC) and Supplementary Protection Certificates (SPCs)

  • The UK's membership of the European Patent Convention and the ability for UK attorneys to represent clients before the European Patent Office is unchanged. Business as usual here!
  • The question of the UK's ability to participate in the Unified Patents Court (UPC) is still uncertain. The opening of the UPC is still dependent on the outcome of a judicial challenge in Germany (the decision on which is expected within the next few months). Assuming the decision does not prevent Germany from ratifying the UPC agreement, focusses are likely to turn to whether and how the court can function without the UK being a member of the EU.
  • Supplementary Protection Certificates (SPCs) are currently filed at and examined by the UKIPO. Therefore, SPCs will continue to be assessed using the existing rules and new applications can continue to be filed in the usual manner. The key difference is that currently the European Medicines Agency (EMA) grants marketing authorisations (upon which SPCs are based) which cover the UK. Following Brexit, all marketing authorisation for the UK will be granted by the UK Medicines Agency (with marketing authorisations in other member states still being granted by the EMA). After Brexit, the deadline for filing an SPC and the term of an SPC will then be based on the earlier of the UK and EU marketing authorisations.

Trade Marks

  • New EU trade mark applications filed after 31 December 2020 will not cover the UK. After 31 December 2020, in order to obtain trade mark protection covering the UK, it will be necessary to file a trade mark application at the UKIPO (or file a Madrid International application designating the UK).
  • UK applicants will still be able to apply for EU trade mark registrations. Schlich will be able to assist clients with this using our trusted associates on the continent.
  • EU trade marks registered prior to 31 December 2020 will be cloned to provide a "comparable" UK registration. The UK registration will automatically be entered on to the UK Trade Marks Register (at no cost to the applicant and without any steps needing to be taken). The new comparable UK registration will have the same details as the EU registration and will be allocated registration no. "UK009…" followed by the EU registration number ("UK008…" for registrations derived from Madrid registrations designating the EU).
  • Applicants with pending EU trade mark applications on 31 December 2020 will need to refile their application at the UKIPO by 30 September 2021. The new UK application will inherit the priority date of the EU application.

Designs

  • New Community/EU registered design applications filed after 31 December 2020 will not cover the UK. After 31 December 2020, in order to obtain registered design protection covering the UK, it will be necessary to file a registered design application at the UKIPO (or file a Hague International application designating the UK).
  • UK applicants will still be able to apply for EU design registrations. Schlich will be able to assist clients with this using our trusted associates on the continent.
  • EU registered designs registered and published prior to 31 December 2020 will be cloned to provide a "comparable" UK registration. The UK registration will automatically be entered on to the UK Designs Register (at no cost to the applicant and without any steps needing to be taken). The new comparable UK registration will have the same details as the EU registration and will be allocated registration no. "UK9…" followed by the EU registration number ("UK8…" for registrations derived from Hague registrations designating the EU).
  • Applicants with pending EU design applications on 31 December 2020 will need to refile their application at the UKIPO by 30 September 2021. The new UK application will inherit the priority date of the EU application
  • Existing unregistered community designs will continue to be protected under the existing provisions. Through a new Supplementary unregistered design right, designs which are disclosed in the UK after the UK exits the EU will be protected in the UK under the existing unregistered community design provisions.

Plant Variety Rights

  • New Community Plant Variety Right applications filed after 31 December 2020 will not cover the UK. After 31 December 2020, in order to obtain protection covering the UK for plant varieties, it will be necessary to file a plant variety right application at the Plant Variety Rights Office (PVRO).
  • UK applicants will still be able to apply for Community Plant Variety Rights. Schlich will be able to assist clients with this using our trusted associated on the continent.
  • Community Plant Variety Rights marks registered prior to 31 October 2020 will be cloned to provide a "comparable" UK registration. The UK registration will automatically be entered on to the UK Plant Variety Right Register (at no cost to the applicant and without any steps needing to be taken).
  • Applicants with the pending Community Plant Variety Rights on 31 October 2020 will need to refile their application at the UKIPO by 30 June 2021. The new UK application will have the same priority date of the EU application.

Should you have a query regarding any of the issues highlighted above or on a specific point within the guidance notes please do not hesitate to contact us for more specific advice.

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Our news articles are for general information only. They should not be considered specific legal advice, which is available on request.