FAQs and Guides

Guide to IP & Brexit

UK triggers Article 50 of the Lisbon Treaty

The UK Government announced on 29 March 2017 that article 50 of the Lisbon Treaty, which formally starts the process for a member state to leave the European Union (EU), has been triggered, setting in motion the formal negotiation process with the EU for the UK's departure. It may take up to a maximum of two years for the UK to officially leave the EU. During this time, and thereafter, there will be no change in your European IP rights.

Well before the June 2016 referendum, in which the UK voted to leave the EU, D Young & Co had been preparing to open its Munich office. This office, together with our London and Southampton offices, ensures our patent and trade mark attorneys and solicitors remain at the heart of Europe, with full access to the EU market and its legal systems.

With regard to the unitary patent (UP) and Unified Patent Court (UPC), the European Patent Office and the participating countries are in the final stages of establishing the UP and UPC. D Young & Co's combined expertise of European patent attorneys and solicitors within a single partnership makes us extremely well placed to advise clients both in selection of a unitary patent and with regard to the legal and technical complexities of the Unified Patent Court, which is likely to open in December 2017.

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 below 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 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 effecton 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 and Unified Patent Court?

On 28 November 2016, the UK indicated (surprisingly perhaps) that it intended to continue preparations to ratify the UPC Agreement. So far, it has done just that and, while UK ratification is yet to take place, indications are that it will. In that event, the UP & UPC project can commence before the UK leaves the European Union. The most recent provisional timetable from the UPC Preparatory Committee is that the system will commence in December 2017.

The position as regards the UK's continuation in the project post Brexit itself is a little unclear. Come what may, D Young & Co will be able to request unitary patents on your behalf, and we have taken steps to enable D Young & Co litigators, with our combination of lawyers and European patent attorneys, to represent clients in both the UK courts and the UPC, making pan-European litigation a strength for our litigation team.

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, and 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.

Brexit & SPCs

Supplementary Protection Certificates (SPCs)

In the European Union (EU), supplementary protection certificates (SPCs) are granted to patented medicinal and plant protection products which have required marketing authorisation (regulatory approval) prior to being placed on the market. SPCs extend the lifetime of the patent (for the approved product) for up to five years, extended by an additional six months for medicinal products if paediatric studies are carried out on the product – their value to the pharmaceutical and agricultural industries is therefore of great significance, as the term of the SPC is typically when the product achieves its peak sales.

What has changed for 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, and 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?

Again, 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 EEA (along 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 lost 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.

Brexit & Trade Marks

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

How has EU trade mark law changed?

It is important to know that currently there is no change to EU intellectual property rights or laws. In particular, the scope, effectiveness and enforceability of unitary EU-wide trade marks and designs remains the same, both within the UK and the other 27 member states. This will continue to be the case until such time as the UK actually leaves the EU, which will occur at the end of a period of negotiation likely to take at least two years.

Will D Young & Co be able to continue representing clients for EU trade mark and design matters and before the EU Intellectual Property Office (EUIPO)?

Yes! Nothing will change with respect to rights of representation for at least the next two years and we have already taken steps to ensure that we will continue to be able to represent clients before the EUIPO (formerly OHIM) following the UK's exit from the EU in due course. These include both the recent opening of our Munich office and ensuring that our attorneys and solicitors are suitably qualified to act.

What will happen to existing EU trade marks?

Once the UK's departure from the EU has been finalised, existing EU trade marks (EUTMs) will no longer provide coverage in the UK.

In the meantime, EUTMs will continue to cover the UK. Although the position is unclear at present, we anticipate that appropriate legislation will be implemented to ensure that such rights continue to have effect in the UK, for example, by converting existing EUTM rights to UK national rights, enjoying the same priority or filing dates.

It is important to be aware, however, that where use of an EUTM takes place only, or predominantly, in the UK, such use is unlikely to support an EUTM against potential revocation in the longer term. We would therefore encourage EUTM owners to review the territorial scope of their usage, with a view to making strategic supplemental national filings where appropriate.

What will happen to existing seniority claims in EU trade marks?

Any existing seniority claims in a EUTM based on national rights in the UK will cease to have effect from the date the UK exits the EU. All other seniority claims will remain unaffected.

EUTM owners are advised to keep any UK national right used in support of a seniority claim in force to ensure the best protection for the trade mark in the UK. Where UK national rights may have already been allowed to lapse following a seniority claim at the EUIPO, we anticipate that legislation will be implemented to ensure that the current EU rules for restoring a national right following the lapsing of a seniority claim will be followed, thereby bringing the lapsed UK national right back into force.

What will happen to international registrations based on an EU trade mark?

The validity of any existing international registration (IR) based on an EUTM will be unaffected by the UK's exit from the EU.

Once the UK does leave the EU, however, UK based companies looking to file new IRs based on an EUTM will be required to prove they have a real and effective commercial establishment in an EU member state in order to rely on the EUTM as a base mark for the IR.

If a UK company cannot fulfil this requirement, UK companies looking for protection in the EU via the IR system are advised to first file a UK application and use this as a basis for the IR, designating the EUTM.

What will happen to international registrations designating a EU trade mark?

Any existing IR designating a EUTM will most likely need a separate UK designation following the UK's exit from the EU; however, it is likely that legislation will be implemented to address this point, allowing conversion of the EU designation of the IR into a UK national designation, without loss of priority or filing date. Any new IRs filed after the UK's exit from the EU will need to designate both the EUTM and the UK in the IR in order to obtain full protection in these countries.

What action should be taken in relation to existing registrations and new applications?

Until the UK actually leaves the EU, existing EUTMs will remain fully effective and enforceable.

In terms of filing new trade marks during this transitional period, however, we recommend filing both an EUTM application along with a separate UK national application. Doing this will provide greater certainty in relation to long-term protection in the UK, and may also avoid the need to convert EUTMs in due course. In addition, we advise continuing to maintain any UK national registrations which may already exist.

Will IP contracts such as EU-wide licences be affected?

We recommend conducting a review of any IP-related agreements, such as licensing arrangements, which involve EUTMs or where the territory is specified as the EU. Unless the agreement expressly deals with the prospect of countries leaving the EU (which is unlikely), the issue of whether a particular agreement will still cover the UK post-Brexit will be open to interpretation.

In general, unless there is anything in the contract to contradict it, it is likely that such agreements (where English law is the governing law of the contract) would be construed as still including the UK, on the basis that the parties intended to include the UK at the time of entering the contract.

It is important to note, however, that the position for any given contract will always depend on the circumstances of the particular agreement in question, hence the importance of reviewing such contracts, taking specific advice and potentially entering variation agreements if required.

To what extent will the principle of 'exhaustion of rights' continue to apply to trade marks?

At present, once goods have been put into circulation in the European Economic Area (EEA) by or with the consent of the rights holder, the relevant trade mark rights are said to be 'exhausted' and the rights holder cannot prevent further free movement of the goods within the single market (unless there are legitimate reasons such as a change in condition of the goods).

The extent to which exhaustion of rights will continue to apply to the UK will largely depend on whether or not the UK remains a member of the EEA (which currently includes all member states of the EU, as well as Iceland, Liechtenstein and Norway). However, if the UK leaves the EEA or if the UK Government takes a restrictive view on international exhaustion, it is possible that rights holders may be able to restrict imports coming into the UK from the EU, and vice versa.

Brexit & Designs

What has changed?

It is important to know that currently there is no change to EU intellectual property rights or laws. In particular, the scope, effectiveness and enforceability of unitary EU-wide designs remains the same, both within the UK and the other 27 member states. This will continue to be the case until such time as the UK actually leaves the EU, which will occur at the end of a period of negotiation likely to take at least two years.

Will D Young & Co be able to continue representing clients for EU design matters and before the EU Intellectual Property Office (EUIPO)?

Yes! Nothing will change with respect to rights of representation for at least the next two years and we have already taken steps to ensure that we will continue to be able to represent clients before the EUIPO (formerly OHIM) following the UK's exit from the EU in due course. These include both the recent opening of our Munich office and ensuring that our attorneys and solicitors are suitably qualified to act.

What will happen to existing Community design rights?

Existing registered Community designs (RCDs) will no longer be effective in the UK after the UK's actual exit. Similarly, it is anticipated that transitional provisions will be introduced so as to provide for national UK registered designs to co-exist alongside residual RCDs.

After the UK's exit from the EU, Community unregistered design rights will cease to apply in the UK. Whilst there is already a separate UK national unregistered design right, this differs from the Community right in a number of respects. In particular, the UK right protects the shape and configuration of a product, whereas a Community unregistered design right covers the appearance of a product, including features such as colours, texture and ornamentation. The UK Government will therefore need to consider whether to legislate so that the national right is extended to include the additional features currently covered by the Community right, thereby closing the potential gap in protection.

What action should be taken in relation to existing registrations and new applications?

Until the UK actually leaves the EU, existing RCDs will remain fully effective and enforceable.

In terms of filing new designs during this transitional period, however, we recommend filing both an RCD application along with a separate UK national application. Doing this will provide greater certainty in relation to long-term protection in the UK. In addition, we advise continuing to maintain any UK national registrations which may already exist.

Will IP contracts such as EU-wide licences be affected?

We recommend conducting a review of any IP-related agreements, such as licensing arrangements, which involve RCDs or where the territory is specified as the EU. Unless the agreement expressly deals with the prospect of countries leaving the EU (which is unlikely), the issue of whether a particular agreement will still cover the UK post-Brexit will be open to interpretation.

In general, unless there is anything in the contract to contradict it, it is likely that such agreements (where English law is the governing law of the contract) would be construed as still including the UK, on the basis that the parties intended to include the UK at the time of entering the contract.

It is important to note, however, that the position for any given contract will always depend on the circumstances of the particular agreement in question, hence the importance of reviewing such contracts, taking specific advice and potentially entering variation agreements if required.

To what extent will the principle of 'exhaustion of rights' continue to apply to designs?

At present, once goods have been put into circulation in the European Economic Area (EEA) by or with the consent of the rights holder, the relevant design rights are said to be 'exhausted' and the rights holder cannot prevent further free movement of the goods within the single market (unless there are legitimate reasons such as a change in condition of the goods).

The extent to which exhaustion of rights will continue to apply to the UK will largely depend on whether or not the UK remains a member of the EEA (which currently includes all member states of the EU, as well as Iceland, Liechtenstein and Norway). However, if the UK leaves the EEA or if the UK Government takes a restrictive view on international exhaustion, it is possible that rights holders may be able to restrict imports coming into the UK from the EU, and vice versa.

Brexit and the UP & UPC

The UK has "confirmed it is proceeding with preparations to ratify the Unified Patent Court Agreement". These preparations will continue over the coming months. This announcement raises a number of questions about the unitary patent (UP) and Unified Patent Court (UPC).

1. Will the UK actually ratify?

The announcement suggests that the UK will, and it could be viewed as a lack of goodwill by the UK if it did not come good on ratification fairly quickly, which may be harmful to the UK's position in negotiating an exit from the EU.

On the other hand, the political situation is unprecedented and things may change. Some issues in this regard:

  • The UK cannot ratify the UPC Agreement without Parliamentary approval of some related UK law. While this is likely, it is not 100% certain that Parliament will give the necessary approval.
  • It is also unclear how and to what extent UK ratification fits in with the Government's plans for the Brexit negotiations – the UK Government press release on ratification certainly mentioned that wider situation, meaning the UK Government could be intending to hold back formal ratification until those negotiations commence.
  • It may also hold off until there is more clarity as to whether and how the UK can participate in the UPC (and maybe UP) post Brexit.

2. If the UK ratifies, when will the system start?

The UPC Preparatory Committee has announced important provisional dates for the unitary patent (UP) and Unified Patent Court (UPC) roll out in 2017. Key dates are:

  • March 2017: final Preparatory Committee meeting
  • May 2017: provisional application phase (PAP) starts (this is not the sunrise-period for opt outs)
  • September 2017: sunrise-period starts
  • December 2017: UP and UPC commence

The committee notes that this schedule is "conditional and provided with the clear disclaimer that there are a number of factors that will dictate whether it is achievable."

3. If the UPC starts (with the UK), what happens between then and the time when the UK leaves the EU?

The UPC should operate as planned, and UPs will be available as soon as the system commences. UPC judgments will cover the UK and UPs will be effective in the UK.

If this has not been sorted out beforehand, work will continue on the mechanics and legal requirements for the UK's potential continued participation in the UPC post Brexit, including whether this is possible.

4. What happens to the UPC when the UK leaves the EU?

This is not clear. There is a large body of support among industry and, we believe, the remaining EU member states, for the UK to remain in the UPC post Brexit. Opinions suggest that this is possible, legally, but there is a real element of uncertainty in this regard and it seems it will be difficult to find a mechanism to obtain legal certainty from the CJEU. This is an area that will have to be explored, urgently, in the period before the UK actually leaves the EU. Until clarified, the position of the UK in the UPC post Brexit will be very uncertain.

If the UK has to leave the UPC when it leaves the EU, UK judges will no doubt have to cease working in the UPC, and the UK local division will close. In addition, the London branch of the Central Division will no doubt be closed, and its work moved elsewhere.

In addition, the effect of judgments in past and pending cases, as regards their effect in the UK, will have to be addressed in the negotiations on the UK leaving the EU, if the UK also leaves the UPC.

5. What happens to the UP coverage in the UK when the UK leaves the EU?

This is not clear. It may be possible to extend the UP Regulation to a non EU member state by some sort of bi-partite accession agreement although this is unclear. While the UPC is an "international" court, and not an EU court, the UP is certainly an EU right. Whether the UK can sign up to that, as a non EU member state, legally or politically speaking, is not clear.

If the UK cannot remain in the UP system post Brexit, then any existing UPs will cease to cover the UK. This will cause problems for those users whose patent coverage in the UK is based on UP protection. The UK Government will have to enact some form of legislation to convert such rights into UK national patents.

6. Should I opt my conventional European patents out of the UPC?

If you were already planning to opt out, the new uncertainties that arise from the UK's situation perhaps provide further reason to do that. However, the main reason users were contemplating opting conventional EPs out was to reduce the risk of central revocation of valuable patents. This is principally a concern of the pharmaceutical sector since that is the sector in which most revocation actions are commenced. This is not affected by the current situation. Another reason to opt out was to avoid possible procedural complexities that exist while national courts and the UPC share jurisdiction, although that is a decision that can be taken later, when litigation is contemplated. Again, that is not affected by the UK's situation.

If you were not planning to opt out, the UK's situation does not obviously affect that decision either. It is important to remember that, during the transitional period, national courts share jurisdiction with the UPC and therefore can be used for infringement proceedings, regardless of the opt out. (Although as noted in the previous paragraph, it may be sensible to opt out before a national infringement action is commenced).

7. Should I choose a UP?

In our view, not while there is any uncertainty about the UK's continued participation in the UP & UPC project, and therefore uncertainty as regards the geographic scope of UPs post Brexit. This assumes the UK is a market you wish to protect.

8. Will you be able to represent me in the UPC?

Yes. The rules regarding representation before the UPC will allow suitably qualified solicitors and European patent attorneys to represent clients before the UPC, regardless of the UK leaving the EU and even the UPC.

9. Will you be able to obtain UPs on my behalf?

Yes. The UP will be a choice at grant of a European patent, and our ability to make this election for you is entirely unaffected by Brexit.

10. What should I be doing now?

Reviving your plans for the commencement of the UPC, including opt-out preparations, economic analysis of UP protection (which will be affected, we think, by the risk to UP protection in the UK) and licensing review.

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