Post Brexit intellectual property rights
Introduction and latest information
Although the UK left the EU at the end of January 2020, the Brexit transition period agreed between the UK and EU Governments means the UK remains governed by EU laws.
The UK Government has confirmed that it will not seek an extension to the Brexit transition period. The transition period therefore will end on 31 December 2020.
Trade talks are still ongoing meaning that, as yet, there is no news on the final form of a trade deal between the UK and the EU. However, to help businesses prepare for Brexit, the UK Government has drafted legislation which is likely to come into force whether or not a trade deal can be agreed on 01 Jan 2021. This legislation will ensure that existing registered EU trade marks and registered Community designs will continue to be protected and to be enforceable in the UK by providing an equivalent right in the UK from 01 Jan 2021.
If you are thinking about applying for either an EU trade mark or registered Community design in the coming months, or if your pending EU trade marks and registered Community designs will not be registered on or before 31 December 2020 (for example, due to office actions, opposition or deferred publication), you will need to consider whether you require protection in the UK and if so, file a separate UK trade mark or design application.
Please find full details of the draft legislation in our IP & Brexit guide below.
With offices in both the UK and Germany, D Young & Co’s service will not be affected by Brexit and we will continue to advise on both EU and UK trade marks and designs.
If you have any queries or need advice relating to how Brexit may affect your intellectual property rights, please do not hesitate to get in touch with your usual D Young & Co contact or email us on firstname.lastname@example.org.
This guide was last updated 27 November 2020.
Address for service for IP rights
The UKIPO recently announced that an address for service in the UK, Gibraltar or the Channel Islands will be required for any new application for a patent, a trade mark or a design filed at the UKIPO from 01 January 2021. This includes EP patents validated in the UK. In addition an address for service in the UK, Gibraltar or the Channel Islands will be required if you wish to challenge or defend a patent, trade mark or design in contentious proceedings at the UKIPO.
During the transition period there are no changes regarding the filing, scope and protection of EU trade marks.
After the transition period UK businesses can still apply for and hold EU trade marks in the same way they can apply for and hold trade marks for other overseas jurisdictions, however EU trade marks will be valid in EU member states only and will no longer be protected in the UK. The Withdrawal Agreement ensures that, after the end of the transition period, EU trade marks will continue to be protected and to be enforceable in the UK by providing an equivalent trade mark registered in the UK.
EU trade mark registrations
All registered EUTMs will be cloned into new UK trade mark registrations on 01 January 2021. Each new right will be referred to as a comparable UK trade mark, and will be created automatically and at no cost to the registered owner. The trade mark will have the same legal status as if it had been applied for and registered under UK law. The registration will retain the filing date recorded against the corresponding EUTM and will also inherit any priority and/or seniority dates. The registration will retain its existing EUTM registration number but will be prefixed with UK0009…. so it is easily identifiable as a comparable UK trade mark.
No certificate of registration will be issued but owners of this new right will be able to access the information online. The comparable UK trade mark will be a fully independent UK trade mark which can be challenged, assigned, licensed or renewed separately from the corresponding EUTM.
EU trade mark applications
An EUTM application which is pending on 01 January 2021 can be re-filed as a new UK trade mark application within a period of nine months from 01 January 2021, maintaining the filing date, priority date or seniority date. The trade mark must be identical and seek protection for the same goods and services to the EUTM or contained within the corresponding EUTM application. It will be subject to the usual application process in the UK. The UKIPO has confirmed that current official filing fees will apply: £170 for one class of goods/services and an extra £50 for each additional class.
Be aware that if you file a UK trade mark application that does not correspond to a pending EUTM application in the nine months after 01 January 2021 a third party could file a UK application after yours and claim the date of an earlier corresponding EUTM application that was pending at 01 January 2021. Where this happens, the later-filed UK application will take precedence.
Eligible EUTMs which are in the three-month period to request conversion into a national right at 01 January 2021 will not be included in process of cloning into a comparable UK trade mark. However, their entitlement to convert into a UK trade mark will be respected. Applications for conversion after 01 January 2021 should be made to the UKIPO within the usual three-month period.
Certification and collective marks
The UKIPO will create comparable rights registered before 01 January 2021. The regulations governing use of the EU mark at the time of creating the comparable mark will not be automatically imported onto the UK Register. The UKIPO will only contact the holder to provide an English translation of the regulations relating to the comparable right when needed, for example, if the comparable mark is subject to proceedings. In this instance, an English language version of the regulations will be required. Failure to provide a translation of the regulations requested may result in loss of the right.
International trade mark registrations which designate the EU
All international trade marks which have designated the EU will be protected in the UK as comparable UK trade marks. On 01 January 2021 a new comparable trade mark (IR) will be created for each international (EU) trade mark designation which has protected status immediately before 01 January 2021. Each new comparable trade mark (IR) will be treated as if applied for and registered under UK law. As such, it may be challenged, assigned, licensed or renewed separately from the original international registration.
When the EU has been designated in an international registration more than once, a new comparable trade mark (IR) will be created for each designation. Where there are multiple trade marks created from a single international trade mark, each comparable trade mark (IR) will be independent.
In these scenarios, the filing and registration date given to the comparable trade mark (IR) will correspond to the date on which protection in the EU was conferred.
Where EU protection was obtained as a result of a subsequent designation, the relevant date of the comparable trade mark (IR) will be the date on which the subsequent designation was recorded in the international register.
New comparable trade marks (IR) will be created at no cost to the holder ensuring minimal administrative and cost burdens.
To identify UK rights created in respect of international registrations (which designated the EU), the number allocated to the comparable trade mark will be the last 8 characters of the international trade mark prefixed with "UK008".
International trade marks which have a pending EU designation
If your international registration designating the EU is pending on 01 January 2021, you will be able to apply to register a UK trade mark in the nine months after 01 January 2021 and retain the filing date of the pending EU designation.
Where an application for protection of an international trade mark designating the EU is made before 01 January 2021, you may not receive confirmation of the international trade mark or subsequent designation until after 01 January 2021. In this case, you can still claim the earlier international (EU) date when applying to register the same trade mark in the UK. This is conditional upon the UK application being filed within nine months of the date on which the international registration was recorded by WIPO. For a subsequent designation, it will be the date on which the request for EU protection was recorded in the International Register.
These applications will be treated as UK applications and will be examined under UK law. Application fees will also be applicable.
If a notice of refusal has been issued by the EUIPO prior to 01 January 2021 this trade mark cannot be used for the purposes of claiming an earlier date when filing a UK trade mark application.
If an international trade mark has been cancelled and a request has been made to transform your international trade mark (EU) into a EUTM prior to 01 January 2021, you can file a UK application based on this right.
The deadline for doing so is nine months from 01 January 2021 to allow you to claim the earlier date assigned to the EU designation.
Where the corresponding EU designation was protected at the time of the international trade mark’s cancellation, the date that may be claimed for the UK application will be the date of the international registration.
Where EU protection was obtained through a subsequent designation, the date on which the request was recorded in the international register may be claimed for the UK application.
Where the EU designation was not yet protected at the time of cancellation of the international registration, you may claim the date of the international application. In the case of a subsequent designation, you may claim the date on which the request was recorded in the international register.
In all cases, if a priority claim under the Paris Convention was made for your international registration, you may claim that date against your UK application.
Opt-out of comparable UK trade marks
There is provision to opt-out if the trade mark owner does not wish to own a comparable UK trade mark. However, it is not possible to opt-out if the mark has been used in the UK by the registered owner or with their consent; if the mark is subject to an assignment, licence, security interest or other agreement or document; or if there are pending proceedings based on the comparable UK trade mark.
Opt-out requests can only be made after 01 January 2021. Any requests made before then will not be valid. A form relating to this request will be available after 01 January 2021. It is a legal requirement to advise interested third parties for the opt-out to have effect. You must confirm that such action has been taken.
If an opt-out has been exercised in circumstances where it was not permitted, the comparable UK trade mark may be reinstated.
The comparable UK trade mark will retain the same renewal date as the corresponding EUTM. Once the comparable UK trade mark has been created a separate renewal fee will need to be paid to both the UKIPO and EUIPO.
EU trade marks that expire six months after 01 January 2021
Where the comparable UK trade mark is due for renewal in the six months after 01 January 2021, a renewal reminder from the UKIPO will be sent to the holder on the renewal date (or as soon as possible thereafter). Holders will be provided with a further six month period for the comparable UK trade mark to be renewed in the UK. Standard official renewal fees will apply: £200 for one class and £50 for each additional class. No late renewal fee will be charged by the UKIPO during this six-month period.
Where an EUTM is due for renewal after 01 January 2021, early payment of the fee with the EUIPO, prior to 01 January 2021 will have no effect (in the UK) and renewal fees will still be payable at the UKIPO.
EU trade marks which have expired before 01 January 2021
A comparable UK trade mark will be created in the following scenarios:
- The EUTM has expired in the six months prior to 01 January 2021.
- The EUTM has not been subject to a late renewal action at the EUIPO and is still within its six-month late-renewal period.
In the above scenarios the comparable UK trade mark will hold an “expired” status and its continued effect in the UK will be dependent upon late renewal of the corresponding EUTM at the EUIPO. Where the EUTM is subsequently renewed as a late renewal the comparable UK trade mark will automatically be renewed in the UK and no renewal fees will need to be paid to the UKIPO.
If the EUTM is not renewed at the EUIPO, the comparable UK trade mark will be removed from the UK register after the original EUTM’s late renewal period, but with effect from 01 January 2021.
Pending EU trade mark oppositions
It remains unclear if earlier UK rights used as the basis for opposition or cancellation proceedings which are not decided by 01 January 2021 will continue to be a valid ground of objection. The latest paper from the EUIPO makes no further reference to this point. We will let you know as soon as there is further information.
EU trade mark cancellation proceedings
Where an EUTM is subject to revocation and/or invalidity proceedings which are ongoing on 01 January 2021, the comparable UK trade mark will ultimately suffer the same fate as the EUTM, that is, if the EUTM is held to be invalid then the comparable UK trade mark will also be held to be invalid and the date of effect of the declaration of cancellation in the UK will be the same as in the EU.
However, the cancellation will only have effect if the grounds are applicable in the UK. This means you do not need to file a separate action against the comparable UK trade mark after 01 January 2021.
Use of an EUTM, whether inside or outside of the UK, which has been made prior to 01 January 2021 will count as use of the comparable UK trade mark.
Where the relevant period for use includes time prior to 01 January 2021, use in the EU will be considered. However, where the relevant five-year period includes time after 01 January 2021, use of the comparable UK trade mark in the UK will also have to be shown.
In all cases, the five-year period of suspended use is activated by last use of the corresponding EUTM registration or comparable UK trade mark. Where that use was made in the EU before 01 January 2021 (whether inside or outside the UK), it will count for the purposes of the comparable UK trade mark.
A similar approach (to use) is being adopted in relation to reputation. The reputation of the corresponding EUTM in the EU prior to 01 January 2021 (but not necessarily the UK) will be considered for the purposes of the comparable UK trade mark.
Where an EUTM is the subject of an assignment prior to 01 January 2021 which has not been recorded on the EUTM Register the comparable UK trade mark will be created in the name of the assignor. Both the assignor and assignee will have the right after 01 January 2021 to apply to the UKIPO for recordal of the assignee as owner of the comparable UK trade mark.
Licences and security interests
EUTMs which are the subject of a licence or security interest which authorises actions in the UK will continue to have effect in the UK. The licence or security interest will be treated as if it applies to the comparable UK trade mark. However, the recordal of these rights will not be automatic. Where a licence or security interest is already registered at the EUIPO before 01 January 2021 the UKIPO will extend the period within which such transactions must be recorded on the UK Register for a comparable UK trade mark to 12 months from 01 January 2021. If you have any licences recorded against your EUTM that should be re-recorded against the comparable UK trade mark, please contact us.
Any licensee should be notified of the new comparable UK trade mark and checks should be made to ensure the creation of the new comparable UK trade mark does not breach any existing agreement.
EU trade mark registrations and applications reinstated after 01 January 2021
These trade marks will not automatically be cloned into comparable UK trade marks. The holder of these trade marks will need to make a specific request to the UKIPO to create a comparable UK trade mark. Reinstatement of EU rights will only be considered if an application is made to the EUIPO within 12 months of the missed deadline.
If an EUTM registration is reinstated after 01 January 2021 the holder will need to inform the UKIPO within six months to obtain a comparable UK trade mark.
If you have a pending EUTM application which is reinstated after 01 January 2021 and holds a filing date before 01 January 2021, you may submit a UK trade mark application claiming the earlier EU filing or priority date. This must be actioned within nine months of the date the corresponding EUTM application was restored.
Customs applications for action (AFAs)
UK national and EU Customs AFAs granted by the Customs authorities in the UK will continue to remain in place in relation to the UK only. Any EU AFAs granted by the Customs authorities of another EU member state will no longer cover the UK. Importantly, EU AFAs granted by the UK Customs authorities will no longer cover remaining member states of the EU after the transition period.
To help businesses prepare, the UK Parliament has passed legislation (The Designs and International Trade Marks (Amendment etc) (EU Exit) Regulations 2019) that will ensure that EU designs will continue to be protected and to be enforceable in the UK by providing an equivalent design registered in the UK. The legislation will come into force at the end of the transition period.
Registered Community designs
The UK Government has confirmed through the legislation that it will ensure that an equivalent enforceable registration will be provided for existing registrations which are fully published. The legislation will also apply to international (Hague) design registrations after the transition period, which designate the EU, and which are published and deemed accepted by the EUIPO. The creation of the equivalent design registration in the UK will be at minimal administrative burden, and seemingly without cost to the registered owner. The registered owner will be informed that a UK right has been granted, but will have the option to opt out.
Pending registered Community designs
For Community designs which are pending at the time of the end of the transition period, or which are registered but not yet published (as a result of deferred publication), the UK Government will provide an option for the applicants to apply for the same protection in the UK within a period of nine months after the end of the transition period, maintaining the date of filing (and priority) of the EU application. This re-application process will also apply to international (Hague) design registrations after the end of the transition period, which designate the EU, and which are either unpublished; still at the application stage; or which are not yet deemed accepted by the EUIPO.
Unregistered Community designs
The UK Government has confirmed that any unregistered Community design right arising before the end of the transition period will continue to be valid for the remaining period of protection. In addition, the UK is creating a supplementary unregistered design right which mirrors the features of the unregistered Community design; this is welcome as it should mean that design features including surface decoration (for example, 2D logos) can be protected under unregistered design law in the UK going forward.
New UK registered designs
It has been made clear that the filing of a new UK trade mark or design application, in the designated nine month period, will be at the usual cost and subject to the usual application processes in the UK.
UK registered design numbering system
For UK registered designs that are re-registered from an existing EU registered design, the UK registered design number will consist of the full 13-digit number assigned to the EU registered design, but prefixed with the digit “9”.
|Existing EU design number||Re-registered UK design number|
For existing international registered designs that designate the EU, the number allocated to the corresponding UK registered design will consist of the full international design number prefixed with the digit “8”.
|Existing international design number||Re-registered UK design number|
|D069640-0001 (DM/069 640)||806964000010000|
|D069629-0001 (DM/069 629)||806962900010000|
|D069629-0002 (DM/069 629)||806962900020000|
Registered Community designs – renewals
The re-registered UK design registration will retain the same renewal date as the corresponding EU registered design. Once the re-registered UK design registration has been created a separate renewal fee will be due in both the EU and UK.
Where the re-registered UK design registration is due for renewal in the six months after the end of the transition period, a renewal reminder from the UKIPO will be sent to the holder on the renewal date (or as soon as possible thereafter). Holders will be provided with a further six month period (running from the date of the reminder letter) for the re-registered UK design registration to be renewed in the UK. Standard official renewal fees will apply and we understand no late renewal fee will be charged by the UKIPO during this six month period.
Where an EU registered design is due for renewal after the end of the transition period, early payment of the fee with the EUIPO, prior to the end of the transition period will have no effect and renewal fees will still be payable at the UKIPO in respect of the re-registered UK design registration.
EU registered designs which have expired before the end of the transition period
A re-registered UK design registration will also be automatically created in the following scenario:
- The EU registered design was due for renewal in the six months prior to the end of the transition period.
- The EU registered design has not been subject to a late renewal action at the EUIPO.
- The EU registered design is still within its six month late renewal period.
In the above scenario the re-registered UK design registration will hold an expired status and its continued effect in the UK will be dependent upon late renewal of the corresponding EU registered design at the EUIPO. Where the EU registered design is subsequently renewed as a late renewal the re-registered UK design registration will automatically be renewed in the UK and no renewal fees will need to be paid to the UKIPO.
If the EU registered design is not renewed at the EUIPO, the re-registered UK design registration will be removed from the UK register after the original EU registered design’s late renewal period.
EU registered design invalidity proceedings
Where an EU registered design is subject to invalidity proceedings which are ongoing on the last day of the transition period, the UK re-registered design will in most cases suffer the same fate as the EU registered design, that is, if the EU registered design is held to be invalid then the UK re-registered design will also be held to be invalid and the date of effect of the declaration of invalidity in the UK will be the same as in the EU.
That being said, where a EU registered design in these instances is held to be invalid, the UK re-registered design will not be invalidated if the grounds on which the EU registered design was declared invalid would not apply or would not have been satisfied in relation to the UK re-registered design if:
- the UK re-registered design had been the subject of an entry on the register as at the date the invalidation proceedings were instituted, and
- an application for a declaration of invalidity of the re-registered design based on those grounds had been made on that date under section 11ZA (the UK route for invalidating a UK registered design).
Customs applications for action (AFAs)
UK national and EU Customs AFAs granted by the Customs authorities in the UK will continue to remain in place in relation to the UK only. Any EU AFAs granted by the Customs authorities of another EU member state will no longer cover the UK. Importantly, EU AFAs granted by the UK Customs authorities will no longer cover remaining member states of the EU after the transition period.
Exhaustion of rights
Currently, IP rights are considered “exhausted” once goods have been placed on the market by the IP owner or with the owner’s consent anywhere within the European Economic Area (EEA), namely the member states of the European Union plus Iceland, Liechtenstein and Norway.
IP rights in relation to goods which are being imported into the UK from an EEA country will continue to be considered as exhausted during the transition period, and it seems, at least for a temporary period after the transition period. The UK Government is considering options for what exhaustion regime should apply after the end of such temporary period. The position relating to exports from the UK may well be different after the transition period, if the UK and EU fail to reach agreement during the transition period. Therefore, there could be restrictions when the transition period ends on the parallel import of goods from the UK into the EEA.
The UK Government has confirmed that it will set up its own GI schemes which will be WTO TRIPS compliant, broadly mirror the current EU regime and be no more burdensome to producers. This will apply from the end of the transition period.
A public consultation has been held to include the UK GI logo and appeals process. The protections will be similar to those enjoyed now by UK GI producers, with all 86 UK GIs given new UK GI status automatically. There are two issues for UK producers of GI products to consider:
- the use of a new UK logo on products marketed in the UK
- the preparation of an application for GI status in the EU, or other steps that producers may wish to take in order to protect product integrity – for example, applying for trade mark protection.
On this second point the UK Government guidance anticipates that all current UK GIs will continue to be protected by the EU’s GI schemes. If that does not occur producers might consider protecting their products by applying for EU collective marks or EU certification marks.
A further point is that the UK would no longer be required to recognise EU GI status. EU producers would be able to apply for UK GI status. This particular point has been highlighted by the EU negotiators as being very important and requires a clear resolution before a final deal is reached. We assume there is a concern, for example, that without a deal, in theory, "British Champagne" may be a possibility.
The guidance advises that “We aim to give businesses and individuals as much certainty as possible as soon as we can, and to ensure that any new requirements are not unduly burdensome.”
.eu domain names
EURid (the registry responsible for the day-to-day running of the .eu top level domain) recently issued an update regarding the registration and ownership of .eu domain names, details of which are set out below.
As of 19 October 2019, only (i) EU citizens (independently of where they live), (ii) EU and EEA residents, and (iii) organisations, businesses and undertakings established within the EU or EEA are permitted to register or hold a .eu domain name.
This means that, as of 01 January 2021 (00:00:00 CET), UK undertakings or organisations established in the UK but not in the EU/EEA, UK citizens who are not resident in an EU/EEA member state, and UK residents who are not EU/EEA citizens (UK registrants) will no longer be eligible to hold a .eu domain name.
Holders of .eu domains are therefore strongly advised to check whether they meet the above eligibility criteria as soon as possible.
EURid has set out the following steps for UK registrants.
Before 31 December 2020
On 01 October 2020, you will receive an email notification from EURid notifying you that your .eu domain name will soon no longer be compliant with the .eu regulatory framework and suggesting that you update your registration data before 31 December 2020. You will receive a further email reminder on 21 December 2020 if your .eu domain name remains non-compliant with the .eu regulatory framework.
On 01 January 2021
If your .eu domain name does not comply with the .eu regulatory framework when the transition period ends (31 December 2020), you will receive an email from EURid on 01 January 2021 notifying you of the withdrawal of your .eu domain name. A withdrawn domain name will no longer function or be capable of supporting any active services such as websites or emails.
EURid will no longer allow the registration of any new .eu domain name by UK registrants. Similarly, it will allow neither the transfer, nor the transfer through update, of any .eu domain name to UK registrants.
01 January 2022
All affected domain names will become available for general registration one year after the end of the transition period.
If you are eligible: you are strongly advised to contact your domain name registrar in order discuss whether you will need to provide proof of eligibility and update your registration details accordingly. This should be completed by no later than the end of the transition period (31 December 2020).
If you are not eligible: before the expiry of the transition period, you are strongly advised to:
- if possible, discuss the possibility of transferring your .eu domain name to a person, undertaking or organisation which satisfies the eligibility criteria;
- discuss the possibility of transferring your internet presence to another top level domain (such as .com, .co.uk, .uk, etc.);
- consider seeking advice from your local domain name registrar on whether the terms of your contractual agreement provide for any recourse in the event of withdrawal or revocation of a .eu registration;
- consider developing a migration plan for services and functions that your .eu domain name, website or associated email address is linked to or supports, such as:
(a) .eu email addresses that access critical business processes, including online banking services, online payment providers, government services like HMRC online, or payment verification systems,
(b) .eu email addresses that access services that use an email and password for registration, including membership organisations and clubs, social media, and two-factor authentication services,
(c) .eu email addresses used to communicate with customers, clients, internal communications or to distribute mailing lists,
(d) .eu websites or email accounts that holds data that you need to transfer before any loss of access,
(e) virtual private network (VPN) or other services that use your .eu domain name, and
(f) trade mark or intellectual property rights impacted by the loss of your .eu domain name; and
- seek legal advice.
Similar eligibility restrictions may apply to EU member state country code top level domains such as .fr or .it.
Please also note that following Brexit, with the exception of "well known marks" (as defined under Article 6bis of the Paris Convention), IP rights holders will no longer be able to rely on their UK registered or unregistered rights when seeking to challenge .eu domain names that are subject of speculative and abusive registration.
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.
Supplementary protection certificates and regulatory protection
After the transition period, the SPC regime in the UK will continue to operate largely as before. The requirements for obtaining an SPC will be largely unchanged. However, under the Northern Ireland protocol, the process for applying for an SPC in the UK will change as explained below.
D Young & Co will continue to be able to represent clients in relation to SPCs. Although SPCs are based on EU legislation they are national rights, so the filing of SPCs will remain unchanged. There will be no change in our ability to file UK SPCs, nor SPCs in other European countries where we will continue to instruct our trusted network of SPC agents, as now.
New SPCs based on UK marketing authorisations
The UK SPC legislation which will take effect after the end of the transition period largely mirrors the existing EU SPC Regulation. However, after the transition period a UK national marketing authorisation (MA) will be required for both medicinal products and plant protection products in order for the product to be entitled to a UK national SPC. In addition, although existing EU case law on SPCs will continue to have authority on first instance courts in the UK, it is possible that the case law applied to the UK SPC regulation may depart from the EU case law over time.
The UK constitutes four countries: England, Scotland and Wales (together Great Britain) and Northern Ireland. Under the Northern Ireland protocol, the existing EU legislation relating to regulation of medicines and plant protection products will remain in force in Northern Ireland.
In view of this, after the transition period, the UK’s national Medicines & Healthcare products Regulatory Agency (MHRA) will grant MAs for the whole of the UK, Great Britain only, or Northern Ireland only. It will be possible to apply for one type of MA first, which takes effect in one part of the UK and then subsequently apply for a further MA extending it to the rest of the UK.
The deadline for applying for an SPC will be unchanged (at six months from the grant of the UK MA or six months from the grant of the patent, whichever expires later) and the same documentation and evidence will be required.
However, the SPC will only apply to the parts of the UK which the MA covers. If the MA holder wishes to extend the SPC to other parts of the UK based on a subsequent MA, it will be necessary to apply to the UK IPO within 6 months of the issuance of the subsequent MA. As with the current SPC legislation, this must take place before expiry of the basic patent: once the patent has expired and the SPC is in force in only part of the UK, it will not be possible to extend it to the rest of the UK or to apply for a new SPC covering other parts of the UK.
Of course, there may be instances where differing MAs are issued for different parts of the UK and we may see a patchwork of protection for medicinal products in the UK.
Existing SPCs based on EU marketing authorisations
The EU-wide MAs granted for medicines by the European Medicines Agency (EMA) after the transition period will not apply to the UK and will not be available to support UK SPCs filed after the transition period.
As indicated below, all existing granted EMA MAs will be “cloned” into UK MAs after the transition period. For existing pending or granted UK SPCs based on EMA MAs, the applicant may be asked to provide information on the cloned UK MA, so that this can be recorded on the SPC section of the Patents Register. This will not affect the validity of the SPC and we will be able to attend to such a request if the UKIPO issues it.
All pending SPC applications in the UK will continue to progress: there is no need to refile these and these will cover all four countries forming the UK.
Duration of SPCs
The duration of SPCs, regardless of whether filed before or after the end of the transition period, will remain the same - based on 15 years from either the UK MA date, or the date of the first MA in an EEA member state, whichever is sooner. The term of the SPC, as now, will be capped at five years from the expiry of the basic patent.
New UK paediatric extensions to SPCs
The six-month extension will remain available after the transition period for SPCs for medicines on which agreed paediatric studies have been carried out. For paediatric extensions filed after the transition period, the requirements will largely be the same as previously, and the process of applying for an extension will remain the same - though existing UK legislation will also apply to the availability of this extension.
Applicants will still be able to make the request at the same time as filing the SPC application, or at any point up to two years before the SPC expires. The main difference is that it will no longer be necessary to show that the product is authorised in all EEA member states: it will only be necessary to show it has an MA in the UK. As now, the six-month paediatric extension will not be available for orphan medicines, which will instead retain the additional two years’ market exclusivity as set out below.
Existing UK paediatric extensions to SPCs
The existing EU legislation will continue to apply for paediatric extensions to SPCs for medicines which are pending or granted before the end of the transition period. In particular, for such extensions, it will still be necessary to show that the product is authorised in all EEA member states.
SPC manufacturing and stockpiling waiver
EU legislation introduced in 2019 provided for a waiver from SPC protection which allows third party manufacturers to make SPC-protected medicines for export outside the EU. It also allows making and storage of medicines during the last six months of an SPC ready for sale in the EU after the SPC expires.
Under the EU legislation, the waiver will initially only apply to SPCs that are applied for on or after 01 July 2019. From 02 July 2022, it will also apply to SPCs that were applied for before 01 July 2019, but only if they had not taken effect before 01 July 2019. It is also subject to a number of conditions.
The UK government intends to maintain the waiver after the transition period, but with some important changes. Draft legislation on this matter is currently before the UK Parliament. The waiver will maintain the right of third party manufacturers to manufacture for export, but only to countries outside both the UK and EU, while the SPC is in force. The waiver will also maintain third parties’ right to manufacture for storing within the last six months of the term of the SPC for sale in the UK and EU after expiry of the SPC.
The EU is not intending to mirror this change in its own legislation. This will mean that, if the medicine does not have SPC protection in the UK, the waiver under EU legislation will allow third party manufacturers to manufacture in the EU for export into the UK.
Regulatory-based protection for medicines
After the end of the transition period, there will also be changes in the regulation of human and veterinary medicines and the various forms of regulatory-based protection available. For medicines, existing MAs granted centrally by the EMA will automatically be converted into UK MAs after the transition period. Existing UK MAs based on the mutual recognition or decentralised procedures will be unaffected.
Data and market exclusivity
Regulatory data and market exclusivity will remain available based on UK MAs after the transition period, and the period of “8+2+1” years for this form of regulatory protection will remain unchanged. After the transition period the start of this period will be the date of marketing authorisation in the EU or UK, whichever is earlier.
A dedicated regulatory system for orphan medicines (for the treatment of rare diseases) will continue after the transition period, and a specific UK orphan MA will be granted for such medicines. This will largely mirror the existing EU system, but will also include a number of UK-specific matters such as the prevalence of the disease in the UK, the availability of satisfactory alternative treatment methods in the UK and the significant benefit of the product.
The 10 year market exclusivity for orphan medicines will remain after the transition period. This will also begin on the date of authorisation in the EU or UK, whichever is earlier. Orphan medicines for which agreed paediatric studies have been carried out will, as now, be entitled to an additional two years’ market exclusivity. However, the pre-marketing EU orphan designation for medicines will not be replicated in the UK: orphan status will be decided upon at the time marketing authorisation is granted.
Exemptions from patent infringement for clinical trials
The UK will retain the existing “EU Bolar” law which exempts from patent infringement trials carried out on generic medicines in order to obtain regulatory approval, for marketing after the patent expires. Existing legislation which exempts from patent infringement the various studies, trials and tests carried out on a pharmaceutical product in order to gain regulatory approval anywhere will also remain in force.
With regard to copyright, the UK Government explains that, as a result of the UK’s membership of the main international treaties on copyright (which will not be affected by Brexit), the scope of protection will remain largely unchanged. Further, the EU Regulations and Directives on copyright and related rights will be “ported” into UK law under the EU Withdrawal Act 2018. It explains, therefore, that the immediate issue will primarily be one of reciprocity of those EU Regulations and Directives.
It identifies, among others, the following issues:
Sui generis database rights
Currently, businesses in European Economic Area (EEA) member states (such as the UK) are eligible for database rights in each member state (broadly, these rights do not arise in relation to databases created by non-EEA businesses).
At the end of the transition period, database rights currently in existence will continue to exist in the UK and the EEA for the rest of their duration. However, only UK citizens, residents and businesses will be eligible for new database rights in the UK. Similarly EEA member states will be under no obligation to grant new database rights to UK businesses in those member states. In light of this the UK Government recommends reviewing existing licensing arrangements and, where possible, imposing licensing terms which mitigate this potential loss of rights.
Portability of online content service
Before and during the transition period, UK consumers can access their online content services (for example, Netflix) when they temporarily travel to another EU member state. The same is true for EU customers temporarily visiting the UK. Portability of online content services between the UK and EU will cease at the end of the transition period. Consequently UK customers visiting the EU and EU customers visiting the UK may see restrictions to the content ordinarily available to them when in their home state.
Country-of-origin principle for copyright clearance in satellite broadcasting
Currently, if a satellite broadcaster clears the copyright requirements in its “home” member state it can broadcast into any other EEA member state. This will cease to apply to broadcasts from the UK after the end of the transition period and UK-based satellite broadcasters that currently rely on the country-of-origin copyright clearance rule when broadcasting into the EEA may need to clear copyright in each member state to which they broadcast. The UK will continue to apply the country-of-origin principle to broadcasts from any country. Wider issues regarding broadcasting and video on demand are addressed in the UK government’s specific guidance on this issue.
Prior to and during the transition period, cultural heritage institutions established in a member state of the EEA are entitled to digitise orphan works in their collection and make them available online across the EEA without the permission of the right holder. The UK Government explains that UK-based cultural heritage institutions that continue to do this may be infringing copyright.
Therefore, except for those in specialised industries (such as broadcasting) or with specific copyright portfolios (such as those with database rights), businesses are unlikely to be significantly affected, at least immediately, following the transition period.
Plant variety rights and marketing of seed and propagating material
Any community plant variety rights (CPVR) which have been granted, including those held by UK business, will be automatically recognised in the remaining 27 EU member states and will be automatically recognised and given protection under the UK Plant Varieties Act.
CPVR applications which have not been granted by the end of the transition period will not be extended to cover the UK. To obtain protection in the UK, a separate application for rights in the UK will need to be made following the usual process for UK plant variety rights, using the same priority date and distinctiveness, uniformity and stability (DUS) test.
For new varieties after the transition period, two separate applications – a CPVR and a UK PVR - will need to be made to achieve the same geographical coverage which is presently achieved by one application. The cost implications for breeders are being reviewed by the Animal and Plant Health Agency (APHA). It appears that DUS tests from the EU may be accepted by the UK but that the Community Plant Varieties Office will not accept the results of UK DUS testing.
Marketing seed and propagating material
Business wishing to market seed and propagating material in both the EU and the UK will need to separately apply for listing in the EU Common Catalogue and the UK National Listing.
The UK will apply for its certification processes to be considered as a “third country recognised by the EU as equivalent for seed certification”.
Varieties that are already registered on the EU Common Catalogue but are not on the UK National Listing, are currently being added to the UK list which will allow them to be marketed for a period of two years after the transition period. Any business wanting to add varieties to the National List in this way should contact APHA. After the two year interim period, businesses will need to comply with the new UK arrangements.