By, Clayton D. Shorrock, Esq.
As we all know, on June 23, 2016, the UK, the worlds’ fifth largest economy, voted to leave the European Union. The so called “Brexit” will have major implications on intellectual property rights in the UK and throughout Europe. While the UK will not officially leave the EU for a least two years, and thus, nothing is going to change overnight, IP owners need to be prepared and have strategies in place to navigate the soon to be changing IP landscape.
European Patents
The UK is a signatory to the Europeans Patent Convention (EPC), a treaty that establishes the European Patent Office (EPO). The EPC is separate and apart from membership in the EU and thus, the EPO issues European patents independent of EU regulations and laws. Non-EU countries (i.e. Switzerland) adhere to the EPC while remaining independent of the EU. Thus, assuming the UK remains a signatory to the EPC, Brexit will have a minimal effect on European patents.
On the other hand, Brexit will have a material impact on the new United Patent Court (UPC). The UPC is a patent-specific court that is only open to EU Member States. Once Brexit is finalized, the UK will no longer be eligible to participate in the UPC. Thus, proceedings relating to UK national stage patents granted under the EPC will likely need to be brought directly in the UK courts. Moreover, any Unitary Patents granted under the Unitary Patent System post Brexit will not cover the UK, and those Unitary Patents already granted, would cease to apply to the UK once Brexit is finalized. In addition, since the UK was set to play a major role in the UPC and the Unitary Patent System, Brexit could significantly delay their implementation.
Europeans Trademarks and Designs
Brexit is also set to have significant impact on European trademarks and designs, which provide EU-wide protection. Currently, European trademarks and designs are issued through the European Union Intellectual Property Office (EUIPO), a branch of the EU. Once Brexit is finalized, the UK will no longer be part of EUIPO and thus, new EU registrations after Brexit will not cover the UK.
An important unanswered question is the fate of existing EU registrations in the UK once Brexit is formalized. It seems probable that the UK will enact new laws extending domestic coverage to existing EU registrations, but nothing is set in stone. In the interim, it may be wise for a prudent IP owner to file new trademark/design applications with both the UK directly and EUIPO during the Brexit transition period. Likewise, holders of existing EU registrations would be wise to file new parallel UK applications to maintain their UK protections.
Copyrights
Copyrights are the least harmonized area of European IP law and still rely heavily on territorial laws. As such, Brexit should have a de minimis impact.