Brexit and IP protection: steps to identify new potential risks that may result from the UK leaving the EU

Triniti

On 23rd of June the United Kingdom (UK) voted to leave the European Union (EU). The decision to leave the EU will have a significant effect on the IP market which in the UK has been governed by many EU Regulations and Directives, therefore the regulatory changes and new requirements are inevitable. “Brexit” might strongly affect a wide range of companies and organizations, which protect their IP in UK through the instruments offered by the EU. IP owners who need protection in UK should identify which of their rights are now likely to be affected and may need further application or registration in order to protect intellectual property portfolio of the company. It is recommended to take some steps to identify new potential risks that may result from the “Brexit”.

While it is unclear precisely what the changes in IP protection might be or how they are going to be implemented, some of the issues that are likely to arise are discussed below.

Trade mark

At the moment EU wide trade marks in UK are protected by the EU registration (EUTMs). Therefore it is likely that in order to register a trade mark which would be protected in UK after the “Brexit” takes place one will have to do it through UK’s national registration.  After the process of the “Brexit” is complete, it is likely that new trade mark applicants may be required to file separate trade mark applications both in the UK and the EU.

Meanwhile, the UK applicants will have to identify the contact person in the EU for their existing and future EU trademark applications.

The patents

Currently the process of patent application is pursued by the European Patent Office (EPO). At the moment several non-EU countries, including Iceland, Switzerland and Norway, are members of the EPO, therefore it is most likely that UK will stay a member of EPO after the “Brexit”. Therefore, European patent applications will continue to be available in the UK, and the existing patents will continue to have legal effect in the UK as well.

The long-awaited single European patent, protecting inventions throughout the EU, was expected come into effect in early 2017. However, after the UK has decided to leave the EU, it is expected that the “unitary patent” is going to be delayed and re-negotiated since the UK was one of the dominant players in the European patent world. As a non-member of the EU, the UK will not be able to further participate in the Unitary Patent if the agreement is not changed.

Designs

At the moment designs in the EU are protected through Registered Community Designs (RCDs). After the registration a design is valid in all countries of the European Union, including UK. Like the EUTMs, existing Registered Community Designs (RCDs) are likely to cease to apply in the UK once it formally leaves the EU. It is expected that in the future design applications will have to be filled in both UK and EU.

An unregistered Community design is given protection for a period of three years from the date on which the design was first made available to the public within the territory of the European Union. After three years, the protection cannot be extended.

Copyright

Copyright is governed by domestic regulation in the UK, therefore this should not change significantly once the UK leaves the EU.

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