In a referendum held on 23 June 2016, the UK voted to leave the European Union (EU). Pursuant to Article 50 of the Treaty on European Union, the withdrawal process will take a minimum of two years to complete, however it is likely that the process will be prolonged, given no member state has left the EU before.
How will this unprecedented decision affect your European intellectual property strategy if it proceeds?
Patents
The decision to leave the EU will not affect European patent applications and existing patents. European Patents are granted by the European Patent Office which is not an EU organisation. Further, the European Patent Convention (EPC) comprises non-EU countries such as Iceland, Switzerland and Norway. At present, patents are validated on grant in each country where you wish the European patent to take effect. We expect the validation procedure to continue and “Brexit’ will have no influence on current and future patent applications filed through the EPO.
Unitary Patent and Unified Patent Court
The EU’s Unitary Patent and Unified Patent Court (UPC) system was expected to become operative in late 2016 or early 2017. Our understanding is that this will create a single approach to patent registration and litigation across the European member states. However, we now expect this to be delayed given that a non-member state cannot participate in the UPC and the Agreement on a Unified Patent Court must be ratified by at least 13 of the 25 signatories, which must include the UK, France and Germany.
Trade Marks
Trade marks are currently protected in the UK by either a national UK or an EU registration. We expect that ‘Brexit’ will have an effect on this area of IP.
The Council Regulation which established the Community Trade Mark (now EU trade mark) system was issued pursuant to the Treaty which constituted the European Union and therefore, the EU trade mark system is inextricably linked to the European Union itself. It is difficult to see how the UK could remain a part of the EU trade mark system unless the negotiations between the EU and UK governments decide this should be the case. Otherwise, it is likely that once the UK has left the EU, protection afforded by EU trade marks will no longer cover the UK.
We anticipate existing registrations will be subject to a transitional arrangement but existing EU registrations may need to be transformed to national UK registrations or even re-registered. In the future, if protection is sought in both the EU and the UK, a national UK and a EU application will probably have to be filed.
Designs and European Community
As with trade marks, we anticipate that existing design registrations will be subject to a transitional arrangement, given design protection is currently afforded through either UK national applications or EU applications. If the UK does leave the EU and protection is sought in both the EU and the UK, a national UK and a EU application will probably have to be filed.
In summary, continue to proceed as normal. We will keep you updated on future developments.