What do you need to know about Brexit with regard to the protection of patent rights?
On 31 December 2020, the Brexit transition period will come to an end. Thereafter, the UK will no longer be part of the European Union (EU) insofar as the protection of EU intellectual property rights (IPRs) is concerned. On the other hand, leaving the EU will induce a few changes with regard to patent rights.
BREXIT and Patent rights as of 1 January 2021
- There will be no change in the granting of patents and the settlement of maintenance fees:
- The UK national patent system will remain unchanged as it is governed by national and international law, not EU law; and
- The European patent system, pursuant to which the UK can be designated amongst other EU or non -EU member states such as Switzerland, is also governed by national and international law, not EU law.
- Address for service
For UK (national and EP(UK)) patents or patent applications, an address for service in the UK, the Channel Islands or Gibraltar will be required. An address for service in the EU or EEA will no longer be allowed.
Transitional provisions will apply to applications and proceedings pending on 1 January 2021.
Conversely, a UK address for service will no longer be allowed for EU members national patents or patent applications. UK patent attorneys, solicitors and barristers will no longer be entitled to represent EU clients and an EU entitled representative will have to be designated.
- UK patent attorneys’, solicitors’ and barristers’ entitlement to represent their clients in proceedings in the EPO and the UK IPO will remain unchanged.
- Disputes regarding infringement and validity of granted patents covering the UK (national and EP(UK)) will remain matters for the courts of the UK.
The EPO’s remit to hear post-grant oppositions filed within the first nine months of a European patent designating the UK will also continue.
- As a signatory to the Hague Convention on Choice of Court Agreements, the UK courts will continue to recognize and give effect to exclusive jurisdiction clauses, including those conferring jurisdiction to the courts in the UK in respect of licenses of patents beyond the UK and if requested by the context it will consider questions of infringement of non-UK patents.
- The UK has not fulfilled the requirements necessary to accede to the the Lugano Convention on jurisdiction, recognition and enforcement of judgments in the EU and the EEA in time for it to enter into force on 1 January 2021 and there is still some uncertainty regarding these issues.
- Once the Unified Patent Court agreement enters into force, applicants will have the option to request the grant of so-called unitary patents at the European Patent Office. The UK, however, will not be part of the territory covered by such unitary patents. While a single renewal fee will cover the territory of the EU for Unitary patents after grant, the corresponding EP(UK) patent will require the payment of a separate renewal fee. Unlike EU-based SMEs, UK-based SMEs will not be entitled to a reduction of the single renewal fee due for Unitary patents.
- The UK shall not take part to the Unified Patent Court system, which shall set up an international court to hear cases dealing with patent infringement and revocation of European patents (including unitary patents).
If you have any questions about Brexit or anything else IP related, we are here to help clients with UK and EU rights and will be fully ready post Brexit.
with UK and EU rights and will be fully ready post Brexit.
Anne DESMOUSSEAUX and Marc BROYDE, Founding Partners of Alta Alatis Patent