On 23rd July 2018, the UKIPO published an update to its page “IP and BREXIT: The facts”. Although still by no means a detailed legal proposal, the scope of the update is far broader than the recent Government White Paper on Brexit.
Unsurprisingly, the UK Government confirms that the “UK’s exit from the EU will not affect the current European patent system, which is governed by the (non-EU) European Patent Convention”. As a result, there will be no change in the current system used by UK-based patent attorneys to prosecute, oppose and defend patents at the EPO – in precisely the same way that patent attorneys based in non-EU states such as Switzerland have done for many years.
Looking to the future, the UK Government proposes that the “UK should continue to participate in the unitary patent system and the Unified Patent Court that underpins it”, confirming the UK’s long held desire to participate in this new pan-European system. The arrival of the new patent and associated court continues to be delayed by the constitutional challenge in Germany, but once that is complete then the new system could be ready to launch in 2019. We look forward to further news regarding how the UK Government and the EU could work together in order to preserve the geographical breadth of the new system, one of its key selling points.
Supplementary protection certificates
On patent term extensions (SPCs), the UK Government notes that it will maintain “the current SPC legal framework in the UK as we leave the EU”, which has already been announced in the Draft Withdrawal Agreement. Indeed, the general adoption of EU law into UK domestic law has been planned since the UK announced the EU (withdrawal) bill last year.
The existing national trade mark system will be largely unaffected by Brexit. The UK will also remain a member of the Madrid system for the international registration of trade marks.
Existing EU Trade Mark (EUTM) registrations will continue to have effect in the UK while we are still a member of the EU, and will continue to have effect in the remaining EU27 countries after Brexit. The UK Government has confirmed that registered EUTMs will be “cloned” to create identical UK rights after Brexit. It has recently confirmed for the first time that it intends to carry out this process automatically and free of charge.
No further detail has been provided on EUTM applications that are pending at the date of departure. The present position, as set out in the Draft Withdrawal Agreement, is that such applications will not be cloned, but that applicants will have a nine-month priority period in which to file corresponding UK applications.
For the avoidance of doubt, UK businesses will still be able to register EUTMs covering the EU27 after Brexit.
Again, the existing national systems for protection of registered and unregistered design rights will be unaffected by Brexit. The UK recently ratified the Hague Agreement, meaning that UK businesses will continue to have access to the Hague System for the international registration of industrial designs.
Existing Registered Community Designs will continue to have effect in the UK while we are still a member of the EU, and will continue to have effect in the EU27 countries after Brexit. The UK Government has confirmed that both Registered and Unregistered Community Designs will be “cloned” to create identical UK rights after Brexit, automatically and free of charge.
Furthermore, the UK has confirmed that, in recognition of the fact that we do not have existing domestic legislation affording equivalent national protection to the Unregistered Community Design right, it will establish new schemes to preserve the full scope of that right in the UK.
For the avoidance of doubt, UK businesses will still be able to register Community Designs covering the EU27 after Brexit.
Update: 24th September 2018:
Further guidance has been issued by the government focusing on the implications for patents if there is no Brexit deal. The note confirms that there will be no effect on the normal EPO patent system, which will continue to cover the UK.
For SPCs, the note confirms the following:
“The relevant EU legislation (or its domestic implementation) will be retained in UK law under the EU Withdrawal Act 2018.
The existing systems will therefore remain in place, operating independently from the EU regime, with all the current conditions and requirements.
Any UK legislation supporting the existing systems will also continue to function as normal.
This means that the EU’s legislation on supplementary protection certificates will be kept in UK law. This law, along with the existing supporting provisions in UK patents legislation, will form the UK’s own supplementary protection certificate regime on exit. Likewise, all other EU legislation relevant to patents and supplementary protection certificates will be kept in UK law.”
In relation to the Unitary Patent and the Unified Patent Court, the note states the following:
“If the Unified Patent Court is ratified and comes into force, there will be actions that UK and EU businesses, organisations and individuals may need to consider. The UK will explore whether it would be possible to remain within the Unified Patent Court and unitary patent systems in a ‘no deal’ scenario …
If the Unified Patent Court comes into force and the UK needs to withdraw from both the Unified Patent Court and unitary patent, businesses will no longer be able to use the Unified Patent Court and unitary patent to protect their inventions within the UK. Existing unitary patents will give rise to equivalent UK patent protection to ensure continued protection in the UK.
UK business will still be able to use the Unified Patent Court and unitary patent to protect their inventions within the contracting EU countries. However in the UK, businesses will only have the option of protecting their inventions using national patents (including patents available from the non-EU European Patent Office) and UK courts.
UK business will still be open to litigation within the Unified Patent Court based on actions they undertake within the contracting EU countries if they infringe existing rights.
EU business will no longer be able to use the Unified Patent Court and unitary patent to protect their inventions within the UK but will be able to apply for domestic UK rights as they can now, via the UK Intellectual Property Office and the non-EU European Patent Office.”