Brexit and IP: Business as usual until further notice

It is expected that Boris Johnson will make good on his promise to take the UK out of the EU on 31 January 2020. How will this impact owners of existing European IP rights? Well, until further notice, over at least the next 12 months, not at all.

Patents granted by the European Patent Office (EPO) designating the UK will remain enforceable. These patents, despite having been granted by the EPO under the European Patent Convention (EPC), are actually national UK IP rights. As such, these will be unaffected by whatever transitional arrangements and new post-Brexit legislation is put in place.

Furthermore, regardless of the outcome of Brexit negotiations, applicants will continue to be able to obtain patent protection in the UK through a European patent application filed through the EPO (unless the UK decides to quit the EPC altogether, which is not on the cards). This is because the EPC is not a legal instrument of the European Union, rather a convention agreed to by sovereign nations, including non-EU countries such as Switzerland and Norway.

However, despite the UK having ratified the relevant agreements that created the Unitary (European) Patent and the Unified Patent Court (UPC), there are some doubts to whether without additional UK legislation such Unitary Patents will be valid in the UK. This is despite the UK government’s previous assurances that the UK intends to remain in the UPC and for Unitary Patents to apply in the UK post Brexit.

Trade Marks registered with the European Intellectual Property Office (EUIPO) will remain valid and enforceable in the UK. Under the terms of the Withdrawal Agreement, this will be at least until the expiry of the transition period on 31 December 2020. After this date, all EU TM registrations will be automatically converted into corresponding national UK TM registrations, effective from the original date of filing of the EU TM application. No separate fees are payable for the conversion. However, after conversion, renewal fees become payable as with any UK TM registration.

Relevantly, for EU TM applications that have not resulted in a registered EU TM by 31 December 2020, and are thus not automatically converted, applicants will have the option to re-file a UK TM application within a period of 9 months (i.e. by 30 September 2021) and maintain the priority provided by the EU TM application.

For European registered designs, provisions similar to those applicable for EU TM registrations apply.

One important aspect that will require addressing after the transition period ends concerns parallel importation and exhaustion of IP rights associated with goods put on the market in the UK or in the European Economic Area (EEA). Currently, placing goods in the EEA market by or with the consent of an IP rights holder brings about exhaustion of IP rights. This effectively bars an IP right holder from preventing parallel importers of genuine goods to move freely within the EEA. After the transition period, IP rights associated with goods put on the market in the UK will not be exhausted in the EEA. This means that businesses exporting IP-protected goods from the UK into Europe will need the IP right holder’s consent. On the other hand, the UK will still recognise the EEA exhaustion regime after Brexit, i.e. UK IP right holders who put their goods on the market within the EEA will not be able to prevent parallel importation.

Rest assured that we will keep our clients notified of any developments that require active participation in ensuring their existing Europe-wide applicable IP rights transition smoothly into the post-Brexit world.