What does Brexit Mean for EU IP Law?

Takeaway: With the United Kingdom leaving the European Union, the new Unified Patent Court (“UPC”) and Unitary Patent may be delayed in becoming operative and applying for EU trademarks in the UK will likely change

With respect to the United Kingdom’s (“UK”) vote to leave the European Union (“EU”), known as “Brexit,” it is important to understand the vote’s possible impact on intellectual property (“IP”) rights that may have been secured in the EU under the mindset that IP rights in the EU would cover the UK.

Initially, it should be kept in mind that until the UK actually leaves the EU, and negotiates the terms thereof over the next two (2) years or so, the current procedures and operations are believed to remain in effect.

With respect to European patents, the European patent system is governed by the European Patent Convention, which operates independently of the EU.  The UK is a member of the European Patent Convention, and there is no indication that it will not continue to be a member.  Therefore, the UK can continue to be designated in a European patent application.  There is, however, a new Unified Patent Court in Europe available to handle patent disputes, which was set to come online in 2017.  The exit of the UK from the EU may delay the start date for the United Patent Court.

With respect to EU Trademarks and Designs (also known as Community Trade Marks and Registered Community Designs, respectively) applying in the UK, this is likely to change upon the formal exit of the UK from the EU, and will depend on the negotiated terms of the exit.  It could be that existing EU Trademarks and Designs will need to be “validated” in the UK in order to have effect in the UK.  The exit negotiations may provide for a “validation” procedure that will secure rights in the UK to existing EU rights owners without a loss in priority, filing dates, grant dates, etc.  Another approach that clients may take is to simply register their rights in the UK, which could be tricky for designs if any bar dates apply, or trademarks if there are intervening users.

Ultimately, while there is time to prepare for the transition of the UK out of the EU in terms of IP rights and corresponding licensing or other IP agreements, we recommend that owners of IP rights in the EU audit their IP rights to determine next steps in making sure that they will be covered in the UK once the UK leaves the EU.

Disclaimer – we are not European IP attorneys and base the foregoing on what we have read and studied.  For clients or companies seeking advice in this area, we would, of course, provide such advice in conjunction with our European associates.