By Mary An Merchant, PhD

Brexit, the United Kingdom’s vote to leave the European Union, raises many questions and some are related to intellectual property issues. There are a few anticipated changes to IP rights due to Brexit. Here is a summary of some key issues, and what could happen next.

Trademarks and Designs

Procedures for treatment of EU trademarks will need to be an element of the negotiations for the UK in leaving the EU. Trademarks can filed individually in each EU country or through a unified procedure for registering a mark in all of the twenty-eight member states of the Community Trademark System (CTM) to receive what is now called a European Union trademark. With the Brexit vote, the UK will no longer be a member state. Currently, there are questions about how such European Union trademarks will be treated in the UK. It is anticipated that a new procedure will be developed to convert EU trademarks into UK national trademarks, while still conserving the rights in the remaining EU countries. At the moment, EU trademarks and designs remain valid in the UK with no immediate loss of rights for the marks in the UK.

Unified Patent Court and Unitary Patent

Under current rules, enforcement of patent rights for a patent effective in multiple EU countries requires separate lawsuits in each individual country. A long-time aim is to have one court to resolve patent disputes in EU countries, which would provide uniformity and save the expense of multiple actions. At last, the Unified Patent Court (UPC) was scheduled to come into existence in 2017 after thirteen countries, including Germany and the UK, had ratified the treaty. Ten countries are currently signatories to the UPC Agreement, and the UK was an expected signatory with London as one of the sites for the Court.  With the Brexit vote, it is expected that the establishment and implementation of the UPC will be delayed because the UPC is limited to only states in the EU and the UK is no longer an EU member state. It is very likely that there will at least be a delay in the operation of the UPC, and that patent enforcement will continue to require a country-by-country strategy.

Patents

Patent applications can be filed directly in the UK, though a substantial majority of applications are first filed in a unitary examination procedure under the European Patent Convention (EPC). The EPC examines the patent application and when allowed, the patent is then validated and effective in individual member countries such as the UK. There is no reason to believe that this procedure will be affected by the Brexit vote. The EPC is independent of the European Union (EU) and existed before the EU was instituted. Additionally, EPC signatories include several countries that are not members of the EU. It is expected that the UK will remain a contracting state of the EPC and the current procedures and rights in the EPC for the UK will remain unaffected by the UK leaving the EU. Patents validated in the UK through the EPC should remain unaffected by the Brexit vote.

Conclusion

Patent owners still need to make affirmative decisions about EPC patent applications for opting in or out of the Unitary Patent Court schema, and though delayed, the implementation of the UPC will affect enforcement of patents in Europe and the UK. The UK’s official departure date is unknown because there is a two year period to negotiate the terms of the exit from the EU.

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