29 March 2019… Brexit Day.
This is the date that, at 11pm, the UK will leave the European Union.
The UK can decide to halt the process without consent from the other 27 EU States and stay in the EU at any time up to Brexit Day. However, for the UK to halt the process, this would require a change of UK law – a prospect no UK political parties want to do at present. Brexit Day could also be extended if all the 28 current EU Members agree. Yet, as things stand, the UK is due to leave the European Union regardless of whether there is a deal with the EU or not.
Despite that it has been 2½ years since the UK decided at the fateful referendum of 23 June 2016 to leave the UK, there is still no deal in place by which an orderly exit will proceed, leaving UK citizens facing the very real prospect of a No-Deal exit.
But will a No-Deal Brexit herald start of the end times? Are we to expect the Four Horsemen to ride out across Britain? Thankfully, at least in respect to UK intellectual rights, the reality is likely to be much less interesting.
The UK Government has outlined how existing intellectual property rights protections would or would not change following the UK’s exit from the European Union, which can be found here. In this article we will look specifically at the implications for patent rights in the UK & Europe post Brexit.
Patent rights in the UK & Europe post Brexit
The European Patent Organisation (EPO) operates independently of the European Union and thus Brexit will have no effect on UK membership of the European Patent Organisation and the procedure for filing and granting European patents through the EPO will be unchanged.
The three main areas of UK patent law which are effected by European legislation are:
- supplementary protection certificates (SPCs) for pharmaceutical inventions
- the Unified Patent Court and the unitary patent
- correspondence addresses and confidentiality for UK patents
Supplementary protection certificates for pharmaceutical inventions
SPCs provide an additional period of protection in the UK (under EU law) after a UK patent has expired for patented pharmaceutical products and agrochemicals.
Under a No-Deal Brexit the relevant EU legislation (or its domestic implementation) will be retained in UK law under the EU Withdrawal Act 2018. The existing systems will therefore remain in place, operating independently from the EU regime, with all the current conditions and requirements. Any UK legislation supporting the existing systems will also continue to function as normal.
The EU’s legislation on supplementary protection certificates will remain in UK law. This law, along with the existing UK patents legislation, will provide an equivalent UK supplementary protection certificate regime on exit.
Therefore, existing rights and licences in force in the UK will remain in force after March 2019; pending SPC applications for UK protection, will be assessed on the same basis as they are currently; and any legal proceedings will continue unaffected.
Unified Patent Court and the Unitary Patent
The UK’s ability to remain a party to the Unitary Patent (UP) and Unitary Patent Court (UPC) will largely depend on whether the UPC comes into force before the UK withdrawal from the EU. Scenarios under these scenarios are largely hypothetical at the moment as there is no real certainty around when, or even, if, the UPC will actually come into force.
If the UPC does not come into force before Brexit Day, then the necessary UK legislation to enshrine the EU legislation will not come into force and thus will never take effect in the UK. The UKs participation in the UPC in this scenario will depend on an exception for non-EU Member participation, which is generally seen as unlikely.
If Germany ratifies the UPC before Brexit Day (largely considered to be unlikely) there is quite some uncertainty, even within the UK government whether it is possible for the UK to remain a UPC member. If the UK is required to withdraw from the UPC, then businesses would not be able to use the UPC and the unitary patent system to protect their inventions within the UK. The UK will grant an equivalent patent to any existing unitary patents to ensure their continued protection in the UK.
Businesses could still use the UPC and unitary patent to protect their inventions within the contracting EU countries, but would need to maintain equivalent UK patents (and enforce these in UK courts) to protect their inventions in the UK, thus potentially putting additional burden on companies and individuals for dual filing and enforcement strategies for patent protection across the EU and UK. However, as noted above, prosecution of patent applications before the EPO will remain unchanged up until grant of the patent when validation of the patent in the UK will be required in addition to validation of a Unitary EU Patent.
Correspondence addresses and confidentiality for UK patents
The current requirement for businesses (both in the UK and overseas) applying for a UK patent is that they must have an address for service located either in the UK or the European Economic Area (EEA). Briefing notes issued by the UK Government confirm that this will not be affected by Brexit (Deal or No-Deal) since this requirement is not determined either by EU law or UK’s membership of the EU. Similarly, legal professional privilege give to communications between UK registered patent attorneys and their clients (or other intellectual property representatives) will also not be affected.
The Final Word
There is certainly a real risk that Brexit may happen under a No-Deal scenario, but this still remains a very political issue. Even if a No-Deal scenario does come about, there is likely to be minimal to no impact on existing patent rights in the UK & Europe, and little or no impact for Applicants in ongoing dealings with the European Patent Office who are seeking patent protection in either Europe or the UK specifically. With the uncertainty of BREXIT closely looming, we encourage you to seek advice to clarify any implications for your other IP rights.