Impact of Brexit (i.e. the UK leaving the European Union (EU)) on UK Intellectual Property and particularly the European Patent System

The UK left the European Union on the 31st January 2020. Currently the UK is in a transition period and during this time the UK will continue to apply EU law and will be treated as if it were still a member of the EU. This transition period will end on the 31st of December 2020, unless an extension of the period is agreed by the UK and the EU. Negotiations between the UK and the EU concerning their future relationship and arrangements will take place throughout this period.

How will this impact intellectual property?

Patents:

No Change. The European Patent Office (EPO) is NOT an EU institution, indeed the European Patent System has always included countries (such as Switzerland) that were never part of the European Union. Therefore, Brexit has NO effect on the European Patent system, even after the transition period has expired. The UK will remain a contracting state and will be an EP state that can be validated to provide an EP(UK) patent. Thus, the EP work of Optimus’ European Patent Attorneys, despite being UK citizens, are not and will not be affected by Brexit. In essence, business will continue as usual as the European Patent Convention will continue to be an integral part of UK Intellectual Property Law.

Trade Marks and Registered Community Designs:

The European Union Intellectual Property Office (EUIPO) is an EU institution that oversees EU Trade Marks and Registered Community Designs. During the transition period of the UK leaving the EU, the EU Trade Marks and Registered Community Designs will continue to be unchanged and we still have rights to represent our clients in trade mark and design matters at the EUIPO.

However, after the 31^st of December 2020, this is set to change.  EUIPO design applications and EU trade marks applications will no longer cover the UK. All existing registered EU trade marks and Community designs will effectively be “cloned” onto the respective UK Trade Marks and Design Registers, free of charge, giving the rights holders automatic, equivalent UK registered rights. Any pending applications for EU trade marks and Community designs that have not become registered by the end of the transition period, will be given a nine-month period by which equivalent UK applications can be filed at the UK Office, claiming priority from the EU application filing date, which means that the UK application will be awarded the same filing date as the earlier EU application, but UK filing fees will apply.

Our records system will be able to create records for all the new registrations that will be created in this way. In addition, we are well set up to file new EUIPO and UK applications after this date, in parallel, either as first filings or as filings claiming priority under the Paris Convention.

All international trade mark registrations and registered designs filed via the Madrid and Hague Systems, which designated the EU, will also continue to extend to the UK during the transition period. All design and trade mark registrations filed via this route will also be given an equivalent UK registered right on the respective UK Registers at the end of the transition period. However, for all new design and trade mark applications filed after 31 December 2020, the UK will have to be designated as a separate entity.

Although negotiations are still ongoing, it is understood that UK legal representatives will lose the right to represent clients directly at the EUIPO after the end of the transition period. However, we will be able to continue to represent our clients before the EUIPO in ongoing matters, such as trade mark and Community design oppositions and cancellation actions until those matters are concluded.

We are also currently in the process of making alternative arrangements to be able to continue filing and prosecuting applications through one of our trusted European colleagues to ensure a seamless service to our clients and we will advise further once this is concluded.

Here at Optimus we will continue to keep our clients updated with any new information concerning the effects of Brexit. If you have any queries or concerns, please speak to your usual contact at the firm.