IP Cases & Articles

IP & Brexit - UK & European patent law and practice

​The UK has voted to leave the European Union. In this edition of our newsletter, we consider the impact of ‘Brexit’ on UK and European intellectual property law and practice.

Though the full implications of Brexit remain unclear at present, we are monitoring developments closely and will provide timely updates as soon as the legislative position is addressed by both the UK and EU authorities.

Contact us with your ‘Brexit’ questions or concerns

Please do get in touch with any questions or concerns regarding IP and Brexit by emailing us at brexit@dyoung.com.

Brexit & patents

Following the UK’s decision to leave the European Union (‘Brexit’), there will inevitably be questions about what this all means for patent protection. With this in mind, we have developed a series of FAQs to address any questions or concerns.

Crucially, no patent rights will be lost as a result of the UK vote to leave the EU and there is no change to the services that we can provide to our clients.

The FAQs that follow summarise the likely situation for patent protection in the UK and Europe.

What has changed?

In terms of the European patent system – nothing. There is no change to the way patents can be filed and prosecuted. It is business as usual.

The UK will continue to be a member of the European patent system, which is governed by the European Patent Convention (EPC), a treaty between contracting states to the EPC that is, and will remain, completely separate from the EU.

A number of non-EU members, such as Norway, Switzerland and Turkey, have long been EPC contracting states. Accordingly, the UK’s exit from the EU simply means that the UK will join these other EPC contracting states who are not members of the EU. It will not change the EPC in any way.

Patent protection in the UK will continue to be available via the European Patent Office (EPO) by validating granted European patents in the UK after grant, and our European patent attorneys will continue to act in the usual way in all matters before the EPO.

Will D Young & Co be able to continue representing clients before the EPO?

Yes. The EPO is independent of the EU and a UK exit from the EU has no effect on our ability to represent clients before the EPO. There will be no change in our ability to file or prosecute patent applications or our ability to file or defend oppositions to granted patents.

European patent applications may still designate all contracting and extension states and we will continue to be able to secure protection across the EPC.

What will happen to the planned Unitary Patent (UP) and Unified Patent Court (UPC)?

The most likely impact on the UPC and UP arising from the withdrawal of the UK from the EU is delay. It is possible that this delay will be considerable or indefinite. Absent agreement on the terms of the UK’s departure from the EU, we do not think it is politically likely that the UK will ratify the UPC Agreement in the near future, as had been the plan, even though it could while it remains an EU member state. That being so, it is hard to imagine how the system can start in any near time frame. 

We have also seen comments to the effect that the UK could ultimately continue to participate in the system. Whether that is legally possible or politically feasible remains to be seen. We see problems with both aspects.

We also note that the renewal fees for the UP were set based on validation in the UK and we believe these should be revisited if the UP will no longer cover one of the three largest economies in the EU. This review is likely to take time.

It is also possible that the system may be considered insufficiently attractive to be continued further if it is to do so without the UK. Although, so far, all the official comments have been to the effect that the remaining Contracting Member States intend to go ahead.

In any event, the protection afforded by a European patent will continue in the UK, and the UK being one of the Europe’s largest economies will remain a key jurisdiction in which to enforce rights.

If and when the Unitary Patent comes into existence in the future, we will be best placed to provide litigation services, with the specific benefit of a combined team of lawyers and European patent attorneys, which we believe will be essential in the new court system.

Supplementary protection certificates (SPCs)

There is no change to the EU SPC regulations. In particular, the scope, effectiveness and enforceability of SPCs in the UK remain the same. This will continue to be the case until such time as the UK actually leaves the EU. The negotiations could take many years and suitable transitional provisions will be implemented at an appropriate time – we will keep you informed.

In respect of existing SPCs, although the position is unclear at present, we anticipate that appropriate UK legislation will be implemented to ensure that UK SPCs pending or granted under existing EU legislation will continue to have effect in the UK after the UK leaves the EU.

Will D Young & Co be able to continue representing clients in relation to SPCs?

Yes we will. SPCs will remain valid and enforceable in the UK, and new SPCs can be obtained, until Brexit takes effect. Moreover, Brexit should have no effect on the existing SPC system in other EU countries. Therefore our advice is to continue filing in the usual way for SPC protection in the UK and in other EU countries.

Will UK SPCs continue to be available after the UK leaves the EU?

It is difficult to be certain exactly how SPCs will be impacted – this will depend somewhat on the terms of the UK’s exit, and in particular whether the UK remains in the European Economic Area (EEA) (with Norway and Iceland - to which the EU SPC regulation applies).

However, the purpose of SPCs (to compensate the patent holder for the patent term loss caused by the need to obtain regulatory approval), and their value to the pharmaceutical and plant protection industries, remains unchanged by the UK leaving the EU.

A number of non-EU countries, such as Switzerland, already allow SPCs based on their national law, under provisions that essentially parallel those of the EU regulations. Accordingly, the UK Government is likely to follow a similar model and enact new legislation to allow for UK national SPCs under provisions similar to those currently provided under the EU SPC regulations.

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