For those following Brexit, it looks like the UK will (probably!) be leaving the European Union on 31 October 2019. When this happens, there will be changes to the way that “European” IP laws will be implemented in the UK.
UK patents (i.e. patents obtained via a direct application to the UK Patent Office) will be unaffected.
European patents (i.e. patents granted by the EPO either via a direct application, or via the European regional phase of the PCT) will also be unaffected. This includes European patents that have been validated in the UK either before or after the UK leaves the European Union (EU).
The reason for this is that the European Patent Organisation and the European Patent Convention have nothing to do with the EU: the EPC is effectively a multilateral agreement between the EPC contracting states to treat European patents as if they were national patents. There are certain countries that are already EPC contracting states, but which are not EU member states – so when the UK leaves the EU, it will be on an equal footing to already non-EU but EPC-contracting countries (like Serbia, San Moreno and Turkey).
So, on, before, or after “Brexit day”, there will be no change to GB or EP(UK) patents and no further procedures will be required to amend the designations on a European patent application, or to convert an EP(UK) patent into a GB patent.
Registered designs, on the other hand, are quite different. There are currently (and have been since the inception of the Registered (European) Community Design) two parallel protection systems in place for registered designs in the UK, namely: UK Registered Designs and Registered (European) Community Designs, which are treated for all intents and purposes as if they were UK Registered Designs.
Unlike the European Patent Organisation, which has nothing to do with the EU, the EUIPO is an organ of the EU. So, when countries join the EU, Registered (European) Community Designs automatically extend to the new countries, and conversely, when countries leave the EU, the protection of Registered (European) Community Designs in the leaving countries falls away.
For some time (in the absence of clarification from the UKIPO or new legislation), we have been advising clients wishing to protect their designs in the EU to file parallel UK and EU Registered Design Applications. The reason for this is that if the UK crashed out of the EU and no provisions were in place to retain the UK rights, then the separate UK registration would cover the territory lost from the EU Registered Design on “Brexit day”.
However, recent guidance from the UKIPO indicates that, after “Brexit day”, all existing Registered (European) Community Designs will be converted into UK Registered Designs. This will happen for free and automatically, unless the applicant requests otherwise.
After “Brexit day” applicants wishing to protect their designs in the UK will need to apply for a UK Registered Design (in addition to a Registered (European) Community Design).
Design right (unregistered protection for designs, similar to copyright) arises automatically and is currently protected, in parallel, by UK Design Right and Unregistered (European) Community Design Right. There are differences between the protections conferred by the UK version of Design Right compared with the EU version of Design Right (e.g. longer term of protection in the UK, but surface decoration and ornamentation excluded from protection in the UK).
Any EU Design Right in force before, “Brexit day” will continue in the UK for the remainder of its term (3 years). Any EU Design Right that comes into force on, or after, “Brexit day” will not be effective in the UK. However, UK Design Right will be in force (as it always was) and will be unaffected by the UK leaving the EU.
Copyright, database rights, etc.:
UK Copyright etc. arises automatically, and will be unaffected by the UK’s departure from the EU.
It is believed that similar changes to trade mark law will apply as for Registered Designs, but that is outside our sphere of expertise.
We will continue to monitor the situation, and will provide periodic updates, where possible. In the meantime, if you have any questions, or require an answer relating to a specific situation, then please feel free to contact Tom Hutchinson.