Imp. & Exp. Magazine
August 2016
Imp-Exp Executive Magazine
By Clare A. Cornell; Leythem A. Wall
Authored by Clare A. Cornell and Leythem A. Wall
On 23 June 2016, the UK public was given a vote to decide whether or not to remain a part of the European Union (EU). This referendum was promised by the Prime Minister David Cameron during his campaign leading up to the last UK general election. The UK public had not been given an opportunity to vote on this matter since 1975.
Despite a vote to leave the EU, the UK will continue to abide by EU treaties and laws for at least the next 2 years, or for as long as it takes for withdrawal agreements to be negotiated and new terms established with the 27 remaining EU member countries.
During these next few years it will become clearer how the impact of leaving the EU will affect European intellectual property rights. Of particular significance is whether the UK decides to join other trade agreements, such as the European Free Trade Agreement, or be a part of the European Economic Area.
Below is a summary of the changes we can expect:
Nothing changes. The outcome of the referendum has no effect on the UK’s membership of the European Patent Convention (EPC). The European Patent Office (EPO) is not an EU institution and will still be able to grant European patents that can be validated in the UK.
Representation rights of British European patent attorneys before the EPO remain unaffected.
When it comes into force, the Unitary Patent will be obtained from European patent applications prosecuted at the EPO. Within one month from grant of a European patent application, applicants will have a choice of either a European patent, which can be validated in any of the 38 EPC member states, or a Unitary Patent, which will provide patent protection in EU states that have signed and ratified the Unified Patent Court (UPC) Agreement, or a combination to cover those EU states (Unitary Patent) and other desired EPC states (European patent). Unitary Patents can only extend to EU countries so would not cover the UK. If you wish to obtain European patent protection in the UK, it will therefore be necessary to choose a European Patent and validate in the UK. Alternatively, a national UK patent application could be filed at the UK Intellectual Property Office (UKIPO).
Representation rights of British European patent attorneys before the EPO remain unaffected, and so they will be able to obtain EU Unitary Patents, European patents, and UK patents on behalf of their clients.
The UPC will have jurisdiction over Unitary Patents, and European Patents in EU states that have ratified the UPC Agreement. Accordingly, the UPC would not have jurisdiction over the UK.
The UPC and Unitary Patent come into force four months after at least thirteen states have ratified the UPC Agreement (ten have ratified as of 24 June 2016). Article 89 of the UPC Agreement requires the ratification of the Agreement by the “three [EU] Member States in which the highest number of European patents had effect in the year preceding the year in which the signature of the Agreement” took place. The mandatory ratification of the UK would be passed on to another member state, which, based on current numbers, would be Italy. While it may delay its implementation, the UK leaving the EU does not prevent the UPC moving forward.
However, the UPC Agreement does expressly state that the Central Division in charge of cases relating to human necessities, chemistry and metallurgy will be located in London. It is not yet clear if this would be moved to a different location, which would require an amendment to the UPC Agreement.
During a transitional period, European patents, but not Unitary patents, can be opted out of the UPC jurisdiction. The opt-out can also be withdrawn, but no further opt-out is then possible. Rule 5 of the UPC Rules of Procedure confirms that European patent attorneys can apply for the opt-out and any subsequent withdrawal.
Article 48 of the UPC Agreement also confirms that representatives before the UPC can be selected from lawyers authorized to practice before a court of an EU member state, or European patent attorneys with appropriate qualifications.
Although other UK legal professions may be affected, British European patent attorneys can have full representation rights before the UPC in all Divisions. British European patent attorneys can also opt out European patents from the UPC jurisdiction.
The UK leaving the EU does not affect the European patent system, nor does it affect the UK’s membership of the Patent Cooperation Treaty (PCT). Direct UK patent applications and PCT-UK national phase patent applications can still be filed at the UKIPO.
Supplementary Protection Certificates (SPCs) which extend the duration of patents relating to certain medical or veterinary products are governed by EU regulations.
European Trademarks and Designs
While EU legislation provides for the extension of European Union Trade Mark and Community Design protection to countries joining the EU, it does not deal with the implications of a member state leaving the EU.
It is expected that EU rights will not continue to have any legal effect in the UK once withdrawal from the EU has been completed. Whilst the UK forms its position independent from the EU it is expected that a transitional procedure will be negotiated which will enable EU trade marks and Community designs to be converted into UK national registrations. It is not yet known whether this procedure will be automatic or will require an application to convert rights. Until withdrawal from the EU is completed, all European rights will continue to have effect in the UK.
Once the UK has withdrawn from the EU, applicants requiring protection of trade marks or designs in both the UK and the EU will be required to file two separate applications. Any holder of UK national rights and EU wide trade mark rights will need to make use of the mark in both the UK and the EU in order to avoid vulnerability to cancellation on the basis of non-use in the respective territories.
It is yet to be decided whether UK registered trade mark and design attorneys will be able to continue to represent applicants before the EUIPO once membership of the EU has ceased. However, if the UK chooses to be a part of the European Economic Area, this would likely entitle UK based European trade mark and design attorneys to continue to represent applicants at the EUIPO.
The decision to leave the European Union will have no effect on UK national intellectual property rights but will mean that an IP right in the UK will no longer be eligible to prevent registration of an application for a European Union trade mark.
It is expected that any provision established to convert EU rights into UK national rights is likely to re-set the period during which use must be made of a mark to prevent vulnerability to cancellation on the basis of non-use. This will allow rights holders with the intent to use marks in the UK, who had previously relied upon use elsewhere in the EU to maintain the validity of their rights, to commence use of the mark.
Depending on the UK's decisions regarding membership of other agreements, such as the European Economic Area and the European Free Trade Association, current rules regarding the free movement of goods may cease to have effect in the UK. Total withdrawal from the EU, the EEA, and the EFTA could result in infringement of UK IP rights when goods put on the market in the EU by the rights holder, or with their consent, enter the UK.
The terms of existing agreements and licenses should be reviewed to see if they have been drafted with the understanding that the UK would be covered by virtue of its membership of the EU. Agreements and licenses where scope is defined using the EU as a territorial description may be compromised by the UK’s withdrawal from the European Union.
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