IP Cases & Articles

No Deal Brexit Government advice: patents & the UPC

The impact of a No Deal Brexit on patents and the Unified Patent Court (UPC) – UK Government advice released on 24 September 2018.

As part of the UK Government’s preparations for a possible “hard Brexit”, it has published a set of guidance notes on how intellectual property rights would be affected if the UK leaves the EU in March 2019 with no deal. This is part of a series of technical notices being issued by the Government to assist businesses in their preparations, although it is widely anticipated that an agreement between the UK and EU will still be possible. The UK Government has commented (www.gov.uk) on what may happen in the event of no Brexit deal for UK patents and the UK’s relationship with the Unified Patent Court and unitary patent.

The overall message is one of continuity and business as usual, with the Government seeking to maintain the pre-Brexit status quo.

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, since it is not an EU body; this has also been confirmed by the EPO itself (www.epo.org).

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 25 EU countries. However it is unclear whether the Unified Patent Court and unitary patent will start before 29 March 2019.

If there is no Brexit deal, then the UK Government considers two possible scenarios:

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.

However if it is fully ratified (for its part, the UK has already ratified), then it is currently unknown if the UK would be required to withdraw from one or both of the unitary patent and Unified Patent Court schemes.

If full withdrawal is required, then businesses will not be able to use the Unified Patent Court and unitary patent to protect their inventions within the UK, and so in effect the UK will keep its current status as a separate state to be validated upon grant of an application by the EPO, much like Spain.

However, 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.

Hence in the event that the Unified Patent Court comes into force, but the UK needs to withdraw from the Unified Patent Court and unitary patent, 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.

In the unlikely event that the Unified Patent Court comes into force before the end of March 2019, the UK Government explicitly assures that any existing unitary patents will give rise to a corresponding separate UK right automatically.

Correspondence addresses and confidentiality

As noted above, European patent attorneys based in the UK can 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 March 2019. 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.

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