While the “Leave” result of the June 23 referendum will not have an immediate impact on intellectual property, the eventual British exit (“Brexit”) from the European Union could have long-term implications for IP protection and filing decisions in Europe.
On June 23, the United Kingdom voted in favor of leaving the European Union, raising questions by IP rights holders about the impact the vote and eventual UK withdrawal from the EU will have on their IP rights and patent filings.
For now, the UK is still a Member State of the EU, and all the legislation that gives effect to EU law is still in place. Once the UK officially notifies the EU of its intention to exit the EU, the UK government will have a two-year period in which to negotiate the withdrawal of its membership. In the meantime, below is a summary of the potential implications for utility patents, trademarks, and registered designs that may result from the referendum.
The Brexit will not impact granted, pending, or to-be-filed patent applications in the UK, whether filed directly in the UK or filed through the European Patent Office (EPO) and validated in the UK. Because the EPO is an international organization established by a multilateral treaty—the European Patent Convention—it will still be possible to obtain a patent in the UK through current procedures at the UK Intellectual Property Office by way of the EPO, directly or through the Patent Cooperation Treaty (PCT). In effect, the UK would have a status similar to that of Switzerland, Norway, and Turkey (which are not members of the EU but are members of the EPO), and validation of granted EP patents in the UK would remain available to patent applicants.
The UK’s exit from the EU may have an impact on the proposed EP Unitary Patent System (UPS) and Unified Patent Court (UPC). The UPS would create a European patent with unitary effect that is examined and granted by the EPO like a classical European patent but enforced by a new, centralized court system—the UPC. The remaining EU Member States may reconsider the framework and details of the UPS and the UK’s participation in the UPS.
Trademarks and Registered Designs
The implications of the Brexit on existing EU trademarks and registered designs (the EU equivalent of US design patents) are not yet clear, and there is expected to be some mechanism for owners of rights under the EU trademark and design system to retain the benefit of those rights in the UK after the exit from the EU. In other words, there is no cause for alarm at this time.
Currently, only EU Member States are covered by the European Union Trade Mark (EUTM) system, which means that, absent a change in that system, EUTM registrations would cease to apply in the UK following the Brexit. The relevant laws and regulations are expected to be updated, and new ones enacted, to allow brand owners to retain UK rights in the trademarks covered by their EUTMs, likely by allowing EUTM owners to convert their EUTMs to national UK registrations that benefit from the priority dates in the EUTMs while still maintaining the EUTMs as they apply to the other EU Member States.
Going forward, filing strategies for trademarks, registered designs, and SPCs that specifically include protection in the UK should be considered.
One consequence of the UK no longer being part of the EU Trade Mark System is that UK trademark use will no longer be sufficient to support EUTMs that are not used in any other EU Member State, so those EUTMs will become vulnerable to non-use cancellation. The Brexit could also create new issues affecting trademark owners’ rights to limit or control cross-border shipments of their branded goods between the UK and the other EU Member States.
Similar issues apply to Registered Community Designs (RCDs). In particular, absent a change in the current system, RCDs will no longer extend to the UK, but there will likely be procedures put into place through which RCDs can be partially converted to provide protection on a national level in the UK while remaining valid in the rest of the EU Member States.
Given that the Brexit will not be effective for at least two years from the date the UK notifies the EU of its intention to exit (which may not happen right away), there is no need to take any steps immediately for trademarks and designs covered by existing EUTMs and RCDs respectively, or to take any different approach with respect to new applications being filed. If the UK is important to your business, however, you may wish to consider filing UK national applications along with any new EUTM/EU RCDs—if only to avoid the time and expense of converting later if that becomes necessary.
Supplementary Protection Certificates
Supplementary Protection Certificates (“SPC”) – that grant patentees up to five years of additional exclusivity for certain regulated medicaments and insecticides and herbicides – are governed by European Union (EU) regulations, and are thus only available to EU member states. SPC protection must be applied for in each member state of the EU where a granted European Patent is validated.
The Brexit will likely result in amendments to UK Patents Act or an implementation of a new act to provide for SPC protection in the UK. In the meantime, transitional provisions in the UK will likely be established for existing SPCs, so that these SPCs do not lapse or suddenly cease to have effect in the UK.
Intellectual property right holders in the UK and EU need not take immediate action regarding IP in the UK as a result of the June 23 referendum. No current rights have been lost, the utility patent filing framework has not changed, and there will likely be provisions for continuity of protection for existing trademarks, registered designs and SPCs. However, going forward, filing strategies for trademarks, registered designs, and SPCs that specifically include protection in the UK should be considered.
For more information please visit Morgan Lewis’s Brexit Resource Centre.
John L. Hemmer is partner-elect at Morgan, Lewis & Bockius, where he focuses his practice on intellectual property matters in connection with patent portfolio management, product clearance, patent challenges, patent litigation, technology agreements and IP due diligence. He received his J.D. from Temple Law in 2006.
Anita B. Polott is a partner at Morgan, Lewis & Bockius and the co-head of the firm’s intellectual property (IP) Practice in the Washington, DC, office with a focus on trademarks, copyrights, and unfair competition. She is also a member of the firm’s Brexit team.
Copyright 2016. Morgan, Lewis & Bockius LLP. All Rights Reserved. This article is provided as a general informational service and it should not be construed as imparting legal advice on any specific matter.