Is your IP strategy Brexit ready?

29 01 2020

Is your IP strategy Brexit ready?

The UK will leave the EU on the 31st January 2020 at midnight (Brussels time).  It is important for all IP rights holders to understand what Brexit means for their business and IP strategy. Read our briefing note on what steps need to be taken by IP rights holders post-Brexit.

  • After Brexit, the UK will no longer be part of the European Union or within systems run by EU, such as the European Union Intellectual Property Office (EUIPO) or Community Plant Variety Office (CPVO).  For this reason, the impact of Brexit will differ depending on the IP right involved.
  • There will be no immediate impact for pending IP rights, as there is a transition period which is currently expected to end on 31 December 2020. 

How does Brexit impact Trade Marks and Designs?

  • During the transition period, EU rights, such as EU trade marks (EUTM) and Registered Community Designs (RCD), will still cover the UK.
  • After the transition period expires, EUTM and RCD right holders will need to review their IP strategy to ensure their rights will continue to be protected in the UK.

For existing registered EUTMs and RCDs:

  • All existing registered EUTMs and RCDs will continue to be protected in the UK, and to be enforceable in the UK, by the automatic granting of an ‘equivalent’ registered trade mark or registered design in the UK.
  • This ‘equivalent’ trade mark or design right issued by the UK Intellectual Property Office (UKIPO) will be treated as if the rights had been applied for and registered under UK law. This means that the ‘equivalent’ UK registered trade marks and designs will exist in parallel to the registered EUTM and RCD. These 'equivalent' UK trade mark and design registrations will be subject to payment of separate renewal fees to the UKIPO, can form the basis for Court proceedings, and can be assigned and licensed independently from the corresponding EU rights.

For Applicants whose EUTM or RCD is pending at the date of Brexit:

  • EUTMs and RCDs which are pending at the date of Brexit can be optionally refiled with the UKIPO under the same terms for a UK equivalent right, using the UK application process for registering trade marks and designs. If they are not refiled in the UK, these rights will not be protected in the UK.

For Applicants seeking EU and UK Rights after the date of Brexit:

  • After Brexit, IP rights holders should consider concurrently filing EUTM/RCD and UK trade marks/designs.

How does Brexit impact Patents?

  • European patents are granted under the European Patent Convention (EPC). The EPC is not an EU treaty so Brexit will NOT have an impact on European patents.
  • Therefore, even after Brexit, the UK will remain a member of the EPC and the same system will operate at the EPO.
  • The PCT system and UK national patents (either filed directly at the UK Intellectual Property Office or as regional patent applications from the EPC) are also NOT affected by Brexit.
  • Post-Brexit, as the UK will no longer be part of the EU, ensure all IP transactions (licences, agreements etc) define the 'territory', applicable law etc appropriately to cover the EU and the UK.
  • The law governing supplementary protection certificates (SPCs) is derived from an EU regulation.  Granted or pending SPCs will not be affected by Brexit. During the transition period, it is expected that existing EU SPC provisions will be incorporated into UK National Law. For new SPC applications filed after Brexit, the relevant marketing authorisations will be the marketing authorisations to place the relevant medicinal product on the market in the United Kingdom (previously the relevant market was the EEA).
  • The UK’s future in the Unified Patent Court remains uncertain and the Unitary Patent system is delayed because of a legal challenge in Germany and a decision from the German Court is expected during 2020.

How does Brexit impact Community Plant Variety Rights (CPVR)?

  • Similar to EUTMs and RCDs, for existing CPVRs the UK will automatically grant an ‘equivalent’ CPVR right. Where an application for a CPVR has been made but not yet granted, we understand an application will need to be made in the UK - though details remain uncertain. After Brexit, IP Rights holders should consider concurrently filing for CPVR and UK PVRs.

With offices in the EU and the UK and attorneys qualified to represent our clients before both the UKIPO and EUIPO, Hanna Moore + Curley is ideally placed to represent clients both in the EU and UK. Contact the authors Anna Hally or Marie Walsh or your usual Hanna Moore + Curley attorney if you have any queries on how Brexit may impact your IP strategy.

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