FAQs and Guides

Guide to IP & Brexit

No Deal Brexit Guide

We have also issued guidance as to what will happen in the event of this deal not being agreed. You can find our ‘No Deal Brexit’ guide here.

Read more

Brexit negotiations

The UK is currently due to leave the EU on 29 March 2019. Talks have been ongoing to negotiate the terms of the UK’s exit since the UK Government triggered article 50 of the Lisbon Treaty in March 2017.

On 13 November 2018 it was announced that the UK and EU had agreed the technical issues of a withdrawal agreement which allows for a transition period to enable businesses to continue their preparations. The agreement has since been accepted by the Cabinet Office of the UK government and the EU at a special EU summit on 25 November 2018. UK MPs will vote on the deal after debate in parliament.

Depending upon the results of UK Parliament vote, it is still possible that the agreement may change or that the UK may leave the EU without a deal which would give no transition period.

For now, nothing has changed and it is business as usual. Please rest assured that D Young & Co has taken steps to ensure that we are prepared for whatever form of Brexit happens and we will be able to continue working with you to protect your intellectual property both in the run up to Brexit and beyond. We will keep you informed of any changes that we think will affect your business.

We have prepared some answers to some of the frequently asked questions that we receive – these are below.

Brexit & Patents

CIPA Brexit Update

The Chartered Institute of Patent Attorneys has released its video entitled "European Patent Work Unaffected By Brexit".

Watch the CIPA Brexit Video

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 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.

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 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.

European patent applications may still designate all contracting and extension states and we will continue to be able to secure protection across the EPC.

Brexit & SPCs

Brexit & 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 remain 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 is scheduled for the 29 March 2019. We have taken steps to ensure that we are Brexit ready and will be able to continue to advise our clients on both UK and EU intellectual property rights post Brexit whatever the outcome of the negotiations.

Will D Young & Co be able to continue representing clients for EU trade mark 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 opening of our Munich office in 2016 and subsequent expansion 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, new EU trade marks (EUTMs) will no longer provide coverage in the UK. . The UK Government has announced that it intends to "clone" existing EUTM Registrations across on to the UK register at no cost to owners. 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 international registration (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. 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.

The UKIPO advises that pending EUTM applications at the end of the transition period will be handled similarly, however applicants will need to actually make an application with the UKIPO to protect the same within nine months from the exit date. All of the above is to be at no cost to IP owners.

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.

speechticktitle-abouttitle-careerstitle-clientstitle-contact-ustitle-hometitle-knowledge-banktitle-knowledge-banktitle-news-eventstitle-sectorstitle-servicestitle-team