By Samini Thiruchelvam
The people of Britain have spoken and Britain is making its way out of European Union (EU). As the event unfolded, it was amusing to learn how some blamed the baby boomers for the results and how some youngsters have not had the slightest clue about EU! Petition for a second referendum is now rejected and it has become clear that Britain is exiting EU.
News about companies pulling their operations out of London and researchers not being able to secure funds demonstrate some of the setbacks of Brexit. However, it may take several years to fully fathom the impact of Brexit.
Now that Britain has voted to exit the EU, what are the impacts on its Intellectual Property (IP) laws?
Little or no impact is expected on UK Patents Act of 1977 as it is a national patent statue. Likewise, UK’s participation in the existing European patent system which is governed by the European Patent Convention (EPC) would be unaffected by a Brexit. EPC is independent of EU and non-EU countries like Norway, Switzerland and Turkey are also signatory to EPC. Patent applicants are able to make a single application to the European Patent Office and validate and enforce their Europe patent in the UK.
However, participation of UK in the new European Unitary Patent (EUP) which is expected to take place in 2017 might be affected as EUP is fundamentally based on EU laws. Application under the EUP is much simpler and more cost effective compared to an application under the EPC. Once granted, the patent owner can request for a unitary effect of the patent in all of the 25 member countries. Application procedure under EUP is simplified as patentees are not required to pay annual fees to the individual European countries. Similarly, litigation proceedings will be streamlined with establishment of Unified Patent Court (UPC) which will be able to grant a Europe-wide injunction against a patent infringer. In comparison, a US Patent covers all the 51 states and a US court has jurisdiction over all the states in respect of patent matters.
Following Brexit, UK remains a Contracting Member State of the UPC at present and is continuing to work on the technical implementation of UPC. This shows that there is possibility that UK might still join the new regime by new negotiating terms for its implementation.
In terms of changes in the trade mark registrations, EU trade marks (EUTM) are only available to an EU member state and therefore, after Brexit EUTM registrations would cease to cover UK. However, existing EUTM will protect trademark rights in the United Kingdom until the United Kingdom formally exits the EU.
During this period, it is likely that a transitional provision will be put in place to allow EUTM registration to be converted to national UK trade mark registration while retaining their priority rights. Post-Brexit an applicant will have to file a separate UK trade mark application and other national application which inevitably increases the cost for obtaining a trade mark protection for the same geographical coverage. This will in turn increase the workload at the UK trade mark office and possibly delay the grant of trade mark registration in UK.
Similar to EUTMs, registered community designs (RCDs) will also cease to extend its protection to UK after Brexit. Subject to transitional agreements, existing RCDs might be converted to national UK registrations.
Although the leave vote is casted, Brexit would not follow immediately as there is a period of two years for negotiating its exit terms. During this period, it is vital for businesses to reconsider IP strategies in the European region and obtain rights in the UK by filing separate national applications where applicable.
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