The United Kingdom exited from the European Union on 31 January 2020. Pursuant to the Withdrawal Agreement with the European Union, the UK entered into the so-called Transition Period which ends on 31 December 2020. One of the important purposes of the Withdrawal Agreement is to protect the rights and expectations of applicants and owners of a variety of intellectual property rights in Europe. We summarize below some of the main features of IP protection in Europe during the Transition Period and beyond.
First, the good news: Brexit has little effect on European patents. This is because the European Patent Convention (“EPC”) is not a European Union organization. Indeed, several other non-European Union countries are already members of the EPC such as Norway, Switzerland and Turkey. The UK simply becomes another EPC member state that is not part of the European Union. Following Brexit, there are now 27 EU countries and 11 non-EU countries (now including the UK) which are part of the EPC. (Note that there are also several additional countries in which applicants can obtain patent protection through special provisions of the EPC, such as Moldova, Morocco and Cambodia.)
Supplementary Protection Certificates (”SPCs”) are not European-wide rights, but rather national rights, which for EU countries are subject to European Regulations. SPCs already granted in the UK will continue to be valid under the existing legal framework. Likewise, SPCs granted during the Transition Period will be examined in the same way and will have the same scope of protection. Once the Transition Period ends, however, authorizations must come from the UK Medicines and Healthcare Products Regulatory Agency (MHRA) rather than the European Medicines Agency (EMA). In addition, litigation in SPC cases in the UK will no longer include the possibility of referring an issue to the Court of Justice of the European Union (“CJEU”). Over the past several years, the CJEU has been quite active in taking referrals on issues relating to SPC law, including referrals from UK courts, for example, on issues relating to SPCs for combination products. How much divergence we may see between the positions of the UK courts and the CJEU on SPC law is an open question.
In contrast to patents, European Union Trademarks (“EUTMs”) are processed and granted by the European Union Intellectual Property Office (”EUIPO”) a European Union agency. During the Transition Period the UK will remain part of the EUTM system so that an EUTM can continue to be used to obtain trademark protection in the UK. At the end of the Transition Period an applicant for a still-pending EUTM trademark will have 9 months to apply for trademark protection in the UK. Existing EUTMs will be converted to UK trademarks at no (official fee) charge. (Please see a short discussion below on certain limitations on representation by UK professionals for European Union Trademarks and Community Designs.)
Registered Community Designs (“RCDs”) will be treated like EUTMs. That is, during the Transition Period, the UK will remain part of the RCD system and as such an RCD can be used to provide coverage in the UK. At the end of the Transition Period an applicant for a still-pending RCD will have 9 months to apply for design protection in the UK.
During the Transition period the UK will continue to participate in the European Unregistered Design system. An unregistered design right which arises during the remainder of 2020 can be protected in the UK for whatever remains of its 3 year term of protection. Unregistered design rights arising after the end of the Transition Period can be protected in the UK through a so-called supplementary unregistered design (”SUD”) which the UK is now establishing. It is important to note that a first disclosure of a design in the EU cannot be used to establish a basis for a SUD and could destroy novelty for the design.
Trademark and design protection under the Madrid and Hague systems, respectively, will continue to operate as usual during the Transition Period. Any trademark or design right obtained during the Transition Period will continue to be protected in the UK. The UK is working with the World Intellectual Property Organization (WIPO) to create mechanisms and procedures for the UK following the Transition Period.
Copyright protection in the European Union and other countries is guaranteed by international agreements. The UK has introduced national regulations to remove references to EU law and to ensure that copyright law functions properly after the Transition Period. During the Transition Period the UK and EU will continue to negotiate various aspects of copyright law, in particular with respect to certain cross-border arrangements. After the Transition Period, there is the potential for divergence between UK and EU on issues such as the European Directive on Copyright in the Single Digital Market. The UK has indicated that it will not approve the Directive during the remainder of the Transition Period or thereafter via their own national version of the Directive.
With respect to the specific issue of database rights, the Withdrawal Agreement provides that any such right that exits in the UK or the European Economic Area (“EEA”) before the end of the Transition Period will continue to exist in both the UK and the EEA and continue to be valid for the remainder of its duration. UK entities will not be able to obtain reciprocal protection in the EEA for databases created after the end of the Transition Period,. Other forms of copyright protection or licensing arrangements should be considered.
Exhaustion of IP rights occurs when the right-holder (or an entity authorized by the right-holder) places goods protected by an IP right on the market. Under the current system, placement of such a good on the market in the UK or the EU exhausts the IP rights in both the UK and the EU such that the IP right holder cannot prevent further movement and sale of such goods. During the Transition Period exhaustion of IP rights will proceed in the same way. It is likely that after the Transition period, goods placed in the UK market will not cause exhaustion of IP rights in the EU. Approval by the IP right holder may be needed to export the goods to the EU. In contrast, it appears that goods placed on the market in the EU will cause exhaustion in both the EU and the UK. Stay tuned for more updates on this issue.
During the Transition Period UK professionals can still represent applicants at the EUIPO on matters such as European Union Trademarks and Community Designs. Such professionals also can continue to represent applicants on matters that are still pending at the end of the Transition Period. After the Transition Period ends professionals based within the European Union are necessary for any new European Union Trademark and Community Design matter. With respect to patents, there are no representation issues since the EPC is not an EU-instrument.
The above serves only as a brief summary of some of the major IP-related areas associated with Brexit. Indeed, there are other considerations which have not been addressed such as the effect of Brexit on the potential Unitary Patent and Unified Patent Court. For more information on any of these topics, or any other aspect of European intellectual property law, please contact Berggren´s International Team at internationaldesk@berggren.fi. We will be pleased to assist you.
Please note that this overview is not meant as legal advice and that each specific matter should be evaluated in detail and on its own merits.