By now we have all seen the news. The voters of the UK have decided to leave European Union. I frankly feel this was not the best decision, but I will save my own detailed comments on this decision for later discussions.
For many readers the near-term question is how this will affect intellectual property protection. Here’s my take on this.
Patents. There is no linkage between EPO membership and EU membership. For example Switzerland belongs to EPO but does not belong to EU. So the British exit from EU will not mean an exit from the EPO.
From this it is clear that the Brexit will not have any effect on granted EP (European Patent Office) patents and it will not have any effect on pending EP patent applications. Nothing about Brexit will change how applicants do new EPO filings in the future.
Trademarks and Designs. Brexit will have effects on Community Trademark Registrations and Registered Community Designs. CTMs and RCDs emanate from the EUIPO (European Intellectual Property Office, formerly known as OHIM). When the UK formally ceases to be a member of EU, the automatic result will be that the UK will formally cease to be a member of EUIPO. The event of UK formally ceasing to be a member of EU will be at least some months in the future and might be almost two years in the future. Thus the CTM and RCD consequences will be at least some months in the future.
When the Soviet Union collapsed, patents-in-force and trademark-registrations-in-force in the Soviet Union automatically became individual patents and trademark registrations in each of the new successor countries. I expect that the UK will do what is needed so that each CTM and RCD in force as of the relevant future date will automatically become a trademark registration or registered design in the UK.
If one has a client asking about doing a new Community Trademark application (directly or through Madrid) or doing a new Community Design application (directly or through Hague), it will make sense to check with the client to see whether the client was particularly focused on the UK. If the answer is yes, it will be a good idea to check with counsel in the UK about how best to proceed.
The UK already belongs to Madrid Protocol, so for a new Madrid filing the typical approach in a new Madrid filing would be to designate the UK in addition to designating EM.
The UK does not belong to Hague. It will be particularly helpful if the UK were to join Hague right away.
1. Goodness knows what will now happen with the proposed EU Unified Patent and Unified Patent Court system. Almost certainly there will be a significant delay while they regroup.
2. Be careful of any applications that are in transition at the time of exit, because there may be glitches in the transitional provisions. I seem to recall being unable to nationalize a PCT application in Azerbaijan, because of a glitch in the transition from the USSR to the current arrangement.
There has been some commentary saying that with the UK leaving, the 3 reference countries for the Unitary Patent would now be Germany, France and the Netherlands.
In fact, Italy should be the 3rd, but they have adhered too late.
(note the court is ‘unified’ but the patent is ‘unitary’)
EPO membership is fine but the UPC and the unitary patent is a different matter altogether for the UK.
I have already received some 5 emails from UK firms saying everything is fine… and will stay fine.
They seemed rather worried about the possibility of loosing representation of American clients at the EUIPO.
I’m a UK and European patent attorney with HGF. Can I recommend that you consider the following
http://www.hgf.com/updates/blog/2016/05/would-brexit-mean-the-end-of-the-unitary-patent-and-the-unified-patent-court/
and
http://www.hgf.com/updates/news/2016/06/brexit/
There are some potential implications for the UPC, including whether or not it is still viable in general, and, if so, whether or not it still as cost effective as initially touted, especially if clients still want protection in the UK. This would incur not only the UPC fees, but also UK fees, which could be costs associated with the equivalent of five states. Many clients may only validate in the UK, France and Germany, which could guide clients towards national filing strategies, or towards continuing with the EPC and opting out of the UPC.
If you have any questions, please feel free to contact me.
Regards, Harry Hutchinson
Hi,
Nice article @HH. I am not so sure about Italy being the 3rd country (not being part of the enhanced cooperation at the time) and, of course, the TOP4 fee calculation would need to be redone considering the new participating states. Not the end of the world for the UPC, but surely less appealing!
Regards
UK had announced its intention to join the Hague Agreement this year. I suspect that this is one of the few non-contentious things they could do, and would expect this to be hurried through as a no-brainer. However given the lack of brain many of my compatriots showed on Thursday, this is not certain.