As a full service European IP firm, with offices in the UK, Denmark and Sweden, Potter Clarkson is well placed to deal with the IP implications surrounding Brexit. While the present uncertainty is unhelpful for many businesses, sooner or later the nature of the UK’s future relationship with the EU will become clear. In the meantime, we shall continue to provide our high-quality service, including strategic global advice and representation across all aspects of intellectual property.
We will continue to keep you updated on the UK’s position regarding intellectual property in a post-Brexit landscape. For further information, please see our FAQs below.
How will Brexit impact on UK intellectual property rights?
Existing UK national intellectual property rights will be unaffected by the UK leaving the EU. This means that any UK patents, designs and trade marks, including both European patents and International (Madrid Protocol) Trade Mark Registrations that designate the UK, will continue to apply in the UK. The UK will also continue to be available as a designated state of a European patent application and an International (Madrid Protocol) Trade Mark Registration after the UK leaves the EU.
How will Brexit impact on European patents?
Whatever deal is struck, Brexit will have no impact on European patents and pending applications or on the way that UK-based European Patent Attorneys interact with the European Patent Office (EPO).
The EPO is not an EU institution, which means that the EPO, and the rules and regulations under which it operates in granting European patents, are independent of the EU. Several non-EU countries are already members, Norway being a notable example. Consequently, our ability to apply for, prosecute and challenge European patents at the EPO will remain unchanged post-Brexit.
How will Brexit impact on European trade marks and registered Community designs?
EU trade mark registrations and applications as well as registered Community designs and applications will cease to apply in the UK post-Brexit.
Currently, there are provisions in place to allow conversion of existing EU rights into equivalent national UK rights when the UK formally leaves the EU. The UK government has proposed that there will be an automatic step for granted trade mark and design rights, but a formal request will be required for trade mark and design applications that are pending at the relevant date. Our expert team will be able to provide support and guidance with regard to any transitional arrangements that are put in place.
Will Potter Clarkson still be able to undertake EU Trade Mark and registered Community designs work?
Yes. There will be no impact to the trade mark and registered designs services Potter Clarkson is able to provide for EU trade mark and design matters at the EUIPO.
Will Brexit impact on the likelihood of IP disputes being heard in English courts?
From an economic perspective, the UK will always be an important jurisdiction and the ability to enforce monopolies and/or recover damages flowing from infringing activities will remain commercial imperatives. Similarly, the speed of resolving contested proceedings, the quality of our judges and practitioners and the wide spectrum of relief available from the English Courts (as well as the language of proceedings) will continue to make the High Court a forum of choice for domestic and international litigants alike.
Commercial contracts will continue to be drafted in English in many instances, as the international language of commerce, just as English law and jurisdiction will remain an attractive choice for parties seeking to reach an acceptable compromise in cross border negotiations.
What does the future hold for the Unitary Patent and Unified Patent Court?
Although the fate of the Unitary Patent and Unified Patent Court (UPC) is unclear (largely due to a constitutional challenge in the German courts), the UK government has stated that it wishes to remain a party to these legislative initiatives and ratified the underlying Agreement last year. The Chartered Institute of Patent Attorneys, having sought legal advice on this issue, continues to hold the view that the UK can join the UPC and can remain part of the UPC system even after the UK leaves the EU (see here).
Given the UK’s position as the second largest economy in the EU (by GDP in 2018), it could significantly undermine the UPC’s raison d’être, were the UK to be absent from the UPC system. It is, therefore, possible that political support across Europe for these legislative measures may wane if the UK is unable to participate.
Submitted on 12/02/2019