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Intellectual Property Rights in the U.K. After Brexit

Posted on Jul 27, 2016 in Articles

This article originally appeared in The Legal Intelligencer on July 25, 2016.

While the dust continues to settle from Brexit, questions abound regarding how the United Kingdom’s historic vote to leave the European Union will affect the future. One important subject is intellectual property. How does Brexit affect intellectual ­property rights in the U.K.? Intellectual property owners have a variety of mechanisms ­available for the protection of their patents, designs and trademarks, and Brexit has different significance depending upon how intellectual property protection in the U.K. was obtained.

Let’s start with patents. For years, the European Union (EU) has been trying to implement a system whereby a single patent would be enforceable throughout Europe. In 2012, the EU seemed to be approaching that goal when the European Parliament passed regulations to implement unitary patent ­protection. Subsequently, 24 European countries (including the U.K.) agreed to work out the details for the creation of a Unitary Patent that could be asserted in each country. The European Union was moving forward on this proposal, and they seemed to be making good headway, until Brexit occurred. As the European Union struggles to sort out the details regarding the departure of the U.K., the Unitary Patent will take a backseat. That is unfortunate. Obtaining patent protection in multiple countries within Europe can be extremely expensive, as translations are usually required for each country. The price of multiple translations adds up and the Unitary Patent, in many cases, was seen to be a significantly less expensive option. Regretfully, it now seems that it will be a while before this form of intellectual ­property protection is available.

Another casualty of Brexit will be the Unified Patent Court, the judicial body that was to be created in order to enforce Unitary Patents. The Unified Patent Court was seen as a “one-stop shopping” option, so that a patent could be enforced in multiple European countries without having to assert patent rights in each European ­country individually. Brexit will certainly delay implementation of this venue for asserting patent rights.

For now, an applicant seeking patent protection in the U.K. will need to avail themselves of the existing options. The most basic process for securing U.K. ­patent protection is to file a patent application through the national grant procedures of the U.K.’s Intellectual Property Office (IPO). The IPO will examine a U.K. patent application, and if they agree that its subject matter is patentable, then a U.K. patent will be issued in due course. This is the option that companies usually pursue when they wish to file for patent protection in only one or two countries. Also, this may be the quickest path to obtaining a patent.

The U.K. is a signatory to the Paris Convention, a treaty that conveys ­important intellectual property rights to all of its member countries. In particular, a patent application filed in one member country of the Paris Convention is entitled to the benefits of the filing date of a corresponding patent application filed earlier on in another member country, as long as the two ­applications are not filed more than 12 months apart. Currently, the Paris Convention has 176 member countries. Patent applications filed with the U.K.’s IPO receive the Paris Convention filing date benefit (where applicable).

Brexit has no ­effect on patents that were obtained directly through the national grant procedures of the U.K.’s IPO (whether or not the Paris Convention applies).

Alternatively, companies interested in U.K. patent protection can proceed by taking the European Patent Convention (EPC) route. The EPC allows a company to file a single European Patent Application with the European Patent Office (EPO). The EPO will examine the application, and if a favorable decision is rendered, then a European Patent will be granted. The European Patent must then be validated in any country (such as the U.K.) that is a signatory to the EPC for the patent to be enforceable in that country. Applicants seeking this option need to make one ­additional choice: a) taking the direct European route or b) proceeding through the Euro-PCT route. In the direct European route, the patent application is filed with the EPO and the European Patent Convention governs the entire procedure—through the granting of the European patent. In the Euro-PCT route, two treaties are invoked—the European Patent Convention and the Patent Cooperation Treaty (PCT). The PCT allows a single international application (a PCT application) to be filed, and a search regarding the patentability of the claimed invention to be conducted by any “competent” patent office (that is a PCT signatory) throughout the world (a patent office may or may not be “competent”—depending upon the language of the patent ­application and its technology). After the search is conducted, the PCT application enters individual countries in order to decide whether to grant a patent. Thus, for example, a company that files a PCT application can request a patentability search through the U.S. Patent and Trademark Office (or any other competent patent office), continue the patent procurement process in the EPO, obtain a European patent, and validate the European patent in the U.K. The system is indeed complicated, but it has been honed by many years of experience, and in actuality it runs quite 
smoothly.

There is also an option to file a PCT ­application and then have the U.K. IPO decide whether to grant the patent without going through the EPO.

Brexit has no effect on European patents with U.K. validations (regardless of whether the direct European route or the Euro-PCT route is chosen) or U.K. patents obtained from a PCT application.

Moving on to trademarks, the effect of Brexit again varies depending upon the ­specific type of intellectual property involved. The biggest concern here is with regard to European Union trademark registrations. The European Union Intellectual Property Office (EUIPO) registers almost 120,000 trademarks every year, and a European Union trademark is valid in all 28 countries of the European Union (including the U.K.). Of concern is what will happen to the enforceability of a EU trademark in the U.K. once the U.K. leaves the EU. Most European IP attorneys believe that before this happens, some mechanism will be put into place to ensure that existing EU registrations still provide trademark ­protection in the U.K.

In the meantime, trademark protection in the U.K. can also be sought by filing a trademark registration application directly with the U.K.’s Intellectual Property Office (IPO). This is a good option for a trademark owner that desires registration in a limited number of countries. The direct ­filing of trademark registration applications into the United Kingdom is unaffected by Brexit.

Another path for obtaining a trademark registration in the United Kingdom is through the Madrid protocol. Similarly to the PCT and EPO options for patent ­protection, the Madrid protocol allows a single trademark registration application to be filed for eventual registration in multiple countries. As a result, a trademark applicant can file a Madrid protocol application and (upon approval) request registration in the U.K. (and in any other country that is a ­signatory to the Madrid protocol). This ­option is also unaffected by Brexit.

The next concern triggered by Brexit is with regard to community designs. The EUIPO defines a design as “the appearance of a product: its shape, patterns and colours” and the EUIPO registers almost 85,000 designs each year. A community design is valid in all countries of the European Union and Brexit raises questions regarding future enforceability in the U.K. Once again it is believed that some mechanism will be put in place so that, after the U.K. leaves the EU, the U.K. design protection will be available from a previously registered ­community design. Design protection granted through the U.K.’s IPO is not affected by Brexit.

For now, applicants seeking intellectual property protection in the United Kingdom are being told to proceed as they have done in the past. Brexit is still an evolving story, and it will be some time before the full ­effects (and ramifications) are known.

– by Lawrence Ashery

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