What does Brexit mean for patent applicants?

弁理士

The Brexit vote will have a severe impact on many treaties, thankfully, the impact on the European Patent Convention (EPC) shall be minimal. The EPC was signed in 1973 by participating states to streamline the patent process.

The terms and conditions of the EPC are independent of membership in the European Union, therefore the current framework for the EPC will proceed as normal. The existing procedures from the European Patent Office (EPO) will stay the same. The period for filing opposition proceedings for patents will stay the same. British patent attorneys admitted into the EPO would also still be able to represent applicants at the EPO.

However, future issues may be hindered or hampered by the Brexit vote. Currently, the EPO Application is filed with a central office. The EPO performs a prior-art search to give their opinion on unity, novelty and inventive step. The patent-holder can then forward the European patent separately to the relevant member countries who must validate the patent in the domestic system. From 2017 onwards, the European Unitary Patent (EUP) treaty may be executed. Once a Unitary patent is approved, it will automatically be enforceable in all the countries of the EU (except for Spain and Croatia). Unfortunately, the EUP requires membership within the EU as a precondition for participation in the treaty. Currently, UK will not be eligible, separate approval will be necessary.

Unfortunately, for businesses, because of the recent Brexit vote, they will not be able to benefit from the EUP. The EUP enables massive reduction in litigation costs against patent infringement. The EUP will be litigated in the Unified Patent Court (UPC), which will serve as a central court whose decisions will be binding upon all member countries. The UPC can issue injunctions that will be effective in all the member countries, greatly reducing litigation costs. Furthermore, if a patent is invalidated by the UPC, it will be invalidated in all the EU member countries.

Sadly, now that Britain isn’t eligible for the UPC, patents will have to be separately invalidated in Britain. EU patents will have to pass into the national phase for validation, and also litigate through the British court systems for invalidation and infringement.

http://novotechip.com/2016/06/27/fate-patents-brexit/

弁護士

Hi, do not worry, the « Brexit » will have no impact on pending or futur European patents designating UK owned by British companies or nationals. The member countries of the European Patent Organisation ar not all members of the European Union, as this is already the case of Switzerland, Norway, Island and Turkey and the European Patent Office (EPO) itself does not depend of the European Union.

However, the Brexit will certainly delay lasting or even definitely put into question the entry into force of the European patent with unitary effect (« EPUE »), more commonly known as the « Unitary Paten t» and the Unified Patent Court « UPC » which were announced us for years and and whose the United Kingdom was one of the founding pillars. Indeed, because of the Brexit, the Unitary Patent will not apply to the United Kingdom and the Agreement on the UPC will be void and will have to be completely renegotiated because the absence of the United Kingdom automatically suspends the Unitary Patent. In practice it is now hard to imagine the United Kingdom ratify the Agreement on the UPC as your country finally agrees to an EU output. Certainly the remaining EU member states will also have the possibility of renegotiating the Agreement on UPC so that the ratification of the United Kingdom no longer needed for its entry into force. But in reality, we can now ask whether the European patent with unitary effect is not already sentenced to death and will not suffer the same fate as its predecessor, the Community patent whose founding treaty dates back to 1975 and which has never been implemented. Indeed, the Unitary Patent without the United Kingdom which is one of the three
« key » countries with Germany and France for patent litigation in Europe, necessarily loses interest and attraction especially as the UK territory will not be protected by the Unitary Patent and the scheduled London branch of the UPC will never exist and sit.

For now, do not worry, you still have the « classic » English national patent and the « classic » European patent covering already UK that both continue to exist and function normally. And if the Unitary Patent eventually exist without the United Kingdom, you can also complete the Unitary Patent by a UK national filing before the Intellectual Property Office (IPO) of Newport (South Wales).

Concerning Community trademarks (« CTM ») and designs (« CD »), it will be a different story…

In any case, if this can contribute to rasurer you a little more, know that French people and the rest of Europe continue to appreciate the English and work with UK companies whathever happens because we are too much attached to the Queen of England and the Royal family, Winston Churchill, the Royal Navy, William Shakespaere, William Turner, Sherlock Holmes, Agatha Christie, Charlie Chaplin, James Bond, Harry Potter, Diana Rigg (Emma Peel), Stephen Hawking, David Beckham, the Beatles, the regretted David Bowie and the great Elton John, Kate Bush, the BBC and of course English humor!

弁理士

The UK’s referendum to leave the EU has undoubtedly caused international upheaval – and is likely to do so in the years to come. However, as far as intellectual property management is concerned, there is no need to worry.
Most importantly: the European Patent Convention (EPC) is an international treaty completely independent of the EU – having Switzerland, Norway, Island and Turkey as Contracting States. Therefore, even after the Brexit, European patent applications filed with the European Patent Office (EPO) can still be validated in the UK after grant – as usual. Patents already validated in the UK will keep their status as British national patents.
For the envisaged European patent with unitary effect (Unitary Patent) and the Unified Patent Court (UPC), it still remains to be seen how the process will continue. Unlike the EPC, they are tied to Member States of the EU. Thus, the UK cannot be part of it AFTER leaving the EU. Although unlikely, the UK could still fulfill its role until its actual exit and help the UPC into existence. However, it seems more likely that latecomer Italy, replacing the Netherlands, will take the UK’s place as one of the three nations that have to ratify the UPC Agreement (UPCA). It also remains to be seen what will happen with the envisaged London section of the UPC’s Central Division. However, this may not require a full-blown re-negotiation of the UPCA, but an amendment of the Agreement by the Administrative Committee to bring it into line with an international treaty relating to patents or EU law.
As a German, Chartered UK and European patent attorney, I’m convinced that patent laws are – and will remain – flexible to accommodate the needs of applicants and proprietors including start-ups.
So, “Keep Calm and Talk to a Patent Attorney” whom you trust.

弁理士

I agree with the first three responses posted. However, I would add that, after the UK leaves the EU (assuming that this will definitely go ahead), there might be some small changes with regard to patents in the UK. This is because it will then become theoretically possible for the UK to deviate from those (small) parts of patent law that derive from EU legislation - including provisions governing biotechnological inventions, as well as the "Bolar" exemption for studies and trials on pharmaceutical products.

This is not worth worrying about now, as there are many bridges to cross before we will find out what (if any) changes will be made to the UK's patent legislation on such points.

Of more concern for those working in the area of pharmaceuticals will be the effect upon "centralised" Marketing Authorisations (which, post-Brexit, will no longer be valid in the UK) and upon various forms of IP for pharmaceutical products (including Supplementary Protection Certificates and Orphan Marketing Exclusivity) that derive solely from EU legislation. The UK will need to generate new legislation in these areas, which legislation is likely to require rights holders (including patent applicants) to take action to secure (continued) protection in the UK. It will therefore be important for those affected to keep a close eye on developments in this area.

Further commentary can be found in my LinkedIn post on this topic (https://www.linkedin.com/pulse/dont-panic-mini-guide-brexit-vote-implications-ip-mike-snodin?trk=pulse_spock-articles).

弁護士

As very appropriately mentioned below by Mr Christiaën, it seems to me the key challenge for implementation of the EPUE is renegotiation to replace or eliminate the UK as an essential adopter and whether the EPUE will survive.

商標エージェント

Brexit will also surely have an impact related to already granted and pending European Trademarks and Designs but we do not yet know when we will know (uncertainty) how to act and within which due date.