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The impact of BREXIT on Intellectual Property
18 January 2017 by James Cornford

The impact of BREXIT on Intellectual Property

On 23 June 2016, the UK voted to leave the EU.  As you can imagine, the terms of the UK's exit from the EU will be the subject of complex negotiations between the UK and the remaining EU member states.

At the time of writing, the UK Government has not yet triggered Article 50 of the Lisbon treaty, the formal mechanism for leaving the EU, although this is expected to happen in 2017. Triggering Article 50 starts an extendable two-year negotiation period for leaving the EU, so the UK appears likely to remain in the EU until at least 2019.

We will provide further updates as the situation develops, but in the meantime, below is a brief summary on the impact of BREXIT on patents, trade marks and designs:

Patents

The UK's vote to leave the EU does not affect patent rights - it is 'business as usual'.  This is because the European Patent Convention (EPC) and the European Patent Office (EPO) are not EU institutions.

There is no impact on representation rights: UK-based European Patent Attorneys are still able to represent applicants before the EPO and may continue to do so even after the UK actually leaves the EU.  Similarly, there is no impact on UK patents granted by the UK Intellectual Property Office (UKIPO).

Trade marks and designs

The UK's vote to leave the EU does not affect owners of UK trade marks or designs, but, going forward, will affect applicants for EU trade marks and designs.

Any EU trade mark or design applications filed at the EU Intellectual Property Office (EUIPO) after the UK actually leaves the EU (not expected until 2019, as outlined above) will very likely not afford protection in the UK (depending on the terms of the UK's exit from the EU). At that time, protection in the UK will likely need to be sought by way of a UK national application.

The situation for EU trade mark and design applications filed now, before the UK actually leaves the EU, is less clear.  We anticipate that there will be transitional provisions that either recognise the effect of EU trade marks and designs filed before the UK leaves the EU; or that provide an option to 'convert' or 're-register' the trade mark or design in the UK, so that there is continuity of protection in the UK. Exactly how this might come about is not yet clear. Thus, going forward, if the UK is an important territory, then we suggest filing both UK national and EU applications, at least until the transitional provisions are known. Whilst the additional UK application might, in the long term, prove superfluous, filing both applications is the safest option for ensuring that protection for the UK is in place.

We offer special rates for simultaneous UK and EU filings - please do not hesitate to contact us if this is of interest.

After the UK actually leaves the EU, UK-based European Design and/or Trade Mark Attorneys may no longer be able to file applications at the EUIPO, but Forresters has a fully operational office in Germany and therefore we can continue to represent applicants before the EUIPO.