Brexit (IP) strategy

It’s our first blog as non-EU citizens. How will our new status impact our industry?

9th January 2021

Back in 2019, when the date of 31 December 2020 was chosen as the moment the UK would officially leave the EU, we all thought there would only be one subject on anyone’s minds come January 2021… oh how mistaken we were.

But, even though it is currently being overshadowed by the coronavirus pandemic, Bexit is still a big deal and will impact many areas of our lives, patents and IP included. Having said that, many things will remain unchanged.

Below is a list of a few ‘key points’ we think you, our readers, should be aware of:

Not changing

• There will be little change in the ‘everyday’ obtaining and maintaining of patent rights because the UK national patent system and European patent systems are (and always have been) governed by national and international law, not EU law. This is why the European patent convention has non-EU members, such as Norway, Switzerland and Turkey.
• There will be no change to the availability of remedies from the courts in the UK in patent litigation. In particular, injunctive relief to restrain infringement of a patent in the UK will continue to be available upon consideration of the same legal principles. For example, in standards essential patent disputes, FRAND injunctions will continue to be available further to the UK Supreme Court’s judgment in Unwired Planet v Huawei [2020] UKSC 37. (Declarations of non-infringement and arrow declarations etc. will also continue to be available).
• UK patent attorneys’, solicitors’ and barristers’ entitlement to represent their clients before the EPO (at oral proceeding for example) will continue.

Changing

• The UK’s address for service rules have changed. From 1 January 2021, the rules do not permit the provision of an address for service outside the UK, the Channel Islands or Gibraltar in respect of a UK patent (GB or EP(UK)). An address for service in the remaining EU or EEA will no longer be permitted for new patent applications. There are transitional provisions for applications filed last year that are currently pending.
• The UK will no longer be participating in the new Unified Patents Court and Unitary Patents system if/when it becomes operational.
• Pending EU trademarks will not automatically be granted a comparable right in the UK. New corresponding UK applications must be filed by the end of September 2021 (these applications will retain the filing and priority/seniority dates of the original EU trademark application.)

Nobody knows yet

• EU law governs the regime for supplementary protection certificates (SPCs) for pharmaceutical products and agrochemicals in the UK. The relevant EU legislation has been retained in UK law... for now. There are no significant changes expected in the short term, but in time the legislation governing the grant of SPCs in the UK may be amended.
• For new designs that have yet to be made available to the public and for which unregistered design protection is a part of the protection strategy, professional advice should be sought on when and how the designs should first be made available to the public, as well as whether and where registered design protection should be sought.

If you’d like detailed advice on patent and IP matters post-Brexit, let us know and we’ll put you in touch with our close friends over at EIP (they really are rather good).

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