Post Brexit: patents & the UPC
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 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.
The 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. The UK Government also explicitly notes that, separate to UK patent matters, European patent attorneys based in the UK, such as D Young & Co, can continue to represent applicants before the European Patent Office (EPO), since it is not an EU body; this has also been confirmed by the EPO itself.
Patent protection in the UK will continue to be available via the 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.
European patent applications may still designate all contracting and extension states and we will continue to be able to secure protection across the EPC.
Unitary patent and Unified Patent Court
The Unified Patent Court will hear cases relating to European patents and the new unitary patent – both administered by the non-EU European Patent Office (EPO). The Unified Patent Court will be an international patent court established through an international agreement (the Unified Patent Court Agreement) between the EU countries.
There is a possibility that the Unified Patent Court will not be fully ratified and never come into effect. In this case there will be no changes for UK and EU businesses at the point that the UK exits the EU.
In the event that the Unified Patent Court comes into force after the UK has left the EU, then UK, EU and third country businesses will still be able to use the Unified Patent Court and unitary patent to protect their inventions within the EU, and they will be able to validate the UK upon grant of an EP application as before. UK business will still be able to use the Unified Patent Court and unitary patent to protect their inventions within the other contracting EU countries.
Correspondence addresses and confidentiality
European patent attorneys based in the UK will continue to represent applicants before the European Patent Office, since it is not an EU body. Conversely meanwhile, although prosecution of UK patents is by UK patent attorneys, it is possible for the owner of a UK patent to have an address for service elsewhere in the EEA.
In light of this, the UK Government has now provided assurance that this will continue, and that there is no plan to change current client-attorney privilege for non-UK attorneys in the EEA.
EU Biotech Directive
The UK Government proposes to retain the existing EU law (EU Biotech Directive) relating to biotech inventions after exit day. Therefore, the legal requirements for patenting biotech inventions will remain in place - these requirements are already implemented in UK national patent law. Patent examiners will continue to apply the same law when examining patent applications in this area. Third parties who wish to challenge the validity of a patent will be able to do so on the same grounds as at present.