FEATURE
Brexit How will Intellectual Property Rights change after the transition period? T
here are various European-wide systems currently in place for protecting intellectual property, particularly patents, trade marks and designs. This means that as the UK’s relationship with the EU changes after the Brexit transition period on 1 January 2021, the way in which intellectual property rights can be protected in Europe is also going to change, requiring a corresponding change in IP strategy. As an initial point, it is important to mention that UK national rights will be unaffected by Brexit, whether they be for patents, trade marks or designs, as these are solely governed by national law. Additionally, the UK will continue to be a contracting state to the European Patent Convention, which is not based on EU legislation. Thus, the existing European patent system will be unaffected by Brexit and so UK Patent Attorneys will continue to be able to file, prosecute, validate and oppose European patents for clients before the European Patent Office (EPO), as is the current practice. Therefore, owners of a European patent application do not have to take any action immediately following the end of the transition period. However, a Unitary Patent system was proposed in 2013, which would enable a single validation at the EPO to cover all of the EU member states. The necessary agreements are not yet in force, but the UK government has indicated that they do not wish to be part of the intended system. It is not yet clear what effect this will have on the Unitary Patent system itself and the corresponding Unified Patent Court, but if this system does come into force, it will not provide protection in the UK. Pending applications for Supplementary Protection Certificates, which are based on EU regulation, will continue and can be granted after the end of the transition period. The relevant EU legislation will be retained in UK law and therefore there will be no significant changes in the short term.
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Trade marks and designs are more complicated, as the European systems for both are governed by EU legislation. After the end of the transition period, as would be expected, EU trade mark (EUTM) registrations, Registered Community Designs (RCDs) and Unregistered Community Designs (UCDs) will no longer provide protection in the UK. However, there will be no immediate loss of rights as a result of Brexit. Holders of a granted EUTM or RCD at the end of the transition period will automatically be given a fully equivalent UK right, which will retain the original filing, priority and seniority dates as the EU right. Similarly, holders of an UCD will automatically become the holder of an equivalent UK unregistered right affording the same level of protection for the remainder of the term. No action will be required by owners to obtain these new UK rights and no official fees will be payable. Where an EUTM or an RCD has been applied for but not granted by the end of the transition period, applicants will have 9 months from the end of the transition period to reapply for the equivalent UK right and pay the necessary filing fees. It is therefore important to review any pending EUTM or RCD applications to determine whether any new equivalent UK right should be applied for during this period. This means that European trade mark and design portfolios are likely to significantly increase in size automatically. The new UK rights will retain the same first renewal date as the original EU rights, but will require a separate renewal fee to be paid. It will be important to keep track of these new cases, to ensure that the UK protection does not accidentally lapse. This duplication of rights also means that the strategy behind any contentious proceedings may need to be reconsidered. It has been confirmed that if an EU right is revoked due to a procedure that is pending at the end of the transition period, the newlycreated equivalent UK right will also be revoked. However, this is only applicable to the extent that the grounds of revocation of the EU right apply to the UK right. Additionally, if an action is started
