Your IP rights and Brexit: act now

Thu, 10 Jan 2019

Your IP rights and Brexit: act now

You do not need us to tell you that Brexit has been a rollercoaster ride since the referendum in 2016.  There have been many twists and turns on the journey and it is still, unfortunately, not any clearer what the destination will be.

If you are a business owner, hospital trust, academic or research organisation that is involved in commercialisation of research or innovations then Brexit will have implications in relation to the associated intellectual property.

In this blog, we provide a short and practical summary of where things stand in relation to IP and the draft withdrawal agreement with a guide to what you should be doing now to protect your intellectual property and avoid being caught short.

What IP rights are affected by Brexit? 

There are many different IP rights a business or organisation may own and these extend from patents, designs, and trade marks; through to copyright, database rights, and trade secrets to name a few. The first set of rights can be registered and are discussed below.  The second set are not registerable rights and the general position will not be changed by Brexit (regardless of whether there is a Brexit deal or not) because the UK government will “port across” into UK law the various EU Regulations and Directives that are relevant to them. 

Patents

Patents will not be affected by the UK’s departure from the EU.  There are no EU level rights for patents at present.  The European Patent Convention, which governs the granting of European patents, is not a piece of EU legislation and so no action is required in this sense. 

Having said that, there is a question mark around what will happen to the Unified Patents Court (UPC), which is a proposed single Court for the enforcement of European patents, if the UK leaves the EU. This is unclear although the UK Government has ratified the Unified Patent Court agreement which intends to bring the proposed EU-wide Unitary Patent into force.  We must wait and see if this actually happens. A constitutional complaint in Germany is holding up ratification of the new law for the time being.

EU trade marks and designs

The biggest concern of most IP owners, and, you most probably, is quite rightly, what will happen to their EU registered trade marks and EU registered designs when the UK leaves the EU. The answer depends because the provisions are slightly different depending on whether the UK leaves the EU with or without an agreed Brexit deal.

With an agreed Brexit deal

The draft withdrawal agreement contains provisions under which EU registered trade marks and EU registered designs will be granted an equivalent UK national right.  The procedure under which this will take place has not yet been published, but the process should be automatic, without cost and with minimum administrative burden.

For EU rights registered before 31 December 2020, rights owners will obtain equivalent UK national rights based on the current terms of the draft withdrawal agreement. 

For EU rights still pending at 31 December 2020, there will be no automatic creation of equivalent UK national applications. However, applicants may file an equivalent UK national application during a period of nine months from the end of the transition period whilst retaining the original EU filing/priority date. While details of how any such new UK applications will be processed have not been given, it is believed that they will be examined as a normal UK national application and will be subject to payment of the normal UK application fees.

All of the provisions concerning intellectual property in the draft withdrawal agreement are subject to the agreement being approved by the UK Parliament. It is currently not clear whether approval will be given. 

Without an agreed Brexit deal

The UK Government’s technical notice published on 24 September 2018 sets out guidance on what will happen to trade mark and design rights if the UK leaves the EU without an agreed Brexit deal.  The proposals broadly mirror the arrangements under the draft withdrawal agreement between the UK and the EU but the timing is different.  The “no deal proposals” indicate that registered or granted EU trade marks and designs will be granted an equivalent UK national right.  We do not have any details of the procedure under which such conversion will take place but it is indicated that this will be with “minimal administrative burden”.

For EU rights registered before 29 March 2019, equivalent UK national rights in the event of a no deal scenario will be created in relation to those EU rights.  There should be no re-examination of any equivalent UK national right which is created under these provisions. 

For EU rights pending at 29 March 2019, there will be no automatic creation of equivalent UK rights automatically.  However, as with the proposals under an agreed Brexit deal, applicants will have a nine months period from the date upon which the UK leaves the EU to apply for an equivalent right in the UK and for those rights to be backdated and retain the EU filing/priority date.  Any UK application filed to replicate a pending EU application will be subject to payment of the normal UK application fees. 

What should you do?

It is unclear what would happen if the UK Parliament does not approve the draft withdrawal agreement.  There is a lack of detail around the procedure for creation of equivalent UK rights in relation to EU trade marks and designs which is a cause for concern. 

In light of these concerns we would suggest you consider your position now and look at the possibility of filing UK national rights rather than waiting to see if the withdrawal agreement is approved or if fully detailed no-deal provisions are put in place.

Existing registered rights

Existing registered EU trade marks and EU designs should benefit from the automatic creation of equivalent UK national rights whether the UK leaves the EU with or without an agreed Brexit deal. 

Currently pending EU rights

You should consider trying to complete registration of currently pending EU rights before 29 March 2019 when the UK leaves the EU. 

In that way the rights should be able to benefit from the automatic creation of equivalent UK national rights mentioned above.  If the rights are still pending when the UK leaves the EU and the UK leaves without an agreed Brexit deal, or if the rights are still pending at the end of any transition period in an agreed Brexit deal, then it will be necessary to refile a UK national application and pay UK national fees in order to put an equivalent UK right in place. 

Proposed new applications

 Trade marks

It typically takes an EU trade mark application approximately four to five months to proceed to registration, assuming that there are no objections. With the UK due to leave the EU on 29 March 2019 we believe that, if protection in the UK is important, the safest option is to file a UK national application as well as an EU application.

This avoids the uncertainties around the process for refiling a UK application within the nine months grace period in case the EU application is still pending on 29 March 2019 and the UK leaves without an agreed Brexit deal. 

 Designs

An EU design application will typically be accepted and registered within one to two weeks from filing (assuming that all relevant fees are paid and no deferred publication is requested).  Thus, applications filed now should almost certainly be fully registered before the UK leaves the EU and should benefit from the automatic creation of equivalent UK national rights discussed above for existing registered rights.  As we move closer to 29 March 2019 we recommend that UK national design applications should be filed simultaneously with any EU application if protection is required in the UK.

This blog does not constitute legal advice.  If you wish to take steps based on this blog, then always speak to a legal professional. The details discussed are based on the withdrawal deal being put to the parliamentary vote on 15 January 2019 and may change if amendments to the deal are made thereafter.

Jagvir Purewal - Senior Associate and Patent Attorney at Forresters

Forresters provide clear, sensible and practical advice on intellectual property, including patents, trademarks, designs and copyright, in the UK and across the world.  We have offices in Birmingham, London, Liverpool, Southampton and Munich.  You can find out more here: www.forresters.co.uk

Jagvir is a Senior Associate and Patent Attorney who works from our Birmingham office.  He works with a range of clients and organisations in terms of size and technologies in relation to effective patent and design protection, freedom to operate, IP strategy, IP audits, patent landscaping and enforcement of IP rights. Jagvir’s experience includes working with a range of medical technologies and clients.  His posts include being an honorary lecturer at the University of Birmingham and a trustee at one of Birmingham’s largest mental health charities.  More details here: https://www.forresters.co.uk/people/dr-jagvir-purewal/.

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