IP & Brexit: Overview

UK triggers Article 50 of the Lisbon Treaty

The UK Government has announced (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 last year's 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.

Patents

A UK exit from the EU will have no effect on our ability to represent clients before the European Patent Office (EPO), and will have no effect on the coverage of a European patent or patent application, as the European patent system is governed by the European Patent Convention, a non-EU treaty.

Unitary Patent & 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.

Trade marks & design rights

With regard to European trade mark and design applications, we have already taken steps to ensure that we will remain able to represent clients before the European Union Intellectual Property Office (EUIPO, formerly OHIM). These include both the recent opening of our Munich office and also ensuring our attorneys and solicitors are suitably qualified to act on behalf of all our existing clients.

Once the UK's departure from the EU has been finalised, existing European Union trade marks (EUTMs) and registered Community designs (RCDs) will no longer provide coverage in the UK. We anticipate that appropriate UK 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/filing dates.

For the time being, and until such time as the UK's leaving the EU has been formally recognised (which may take several years), EUTMs and RCDs should (and can) be enforced as normal. In terms of filing new marks during this transitional period, and if pan-European protection is desired for a particular brand, we recommend filing both an EUTM (and design, if appropriate) along with separate UK national applications.