- Keep Calm and IP On: Planning for UK IP Post-Brexit
- July 21, 2016 | Authors: Michael Benjamin Marion; Michael T. Renaud; Brad Michael Scheller
- Law Firm: Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. - Boston Office
- This past Thursday the Brexit vote sent shockwaves around world, including the IP community and in particular with respect to IP rights in the UK and Europe. But concerns at the moment are speculative as nothing yet has changed.
The UK has only voted on whether to leave the EU. The UK has not actually left the EU, nor is any such departure likely for at least two years from the date the UK officially notifies the EU of its plan to withdraw. Modifications to any IP laws will come only through terms of the Brexit negotiated between the UK and the EU in the coming months and years.
In the meantime, we can predict and highlight potential impacts that could result from a UK exit from the European Union.
Unlikely to Change: Patents and Copyrights
The Brexit is unlikely to alter the UK’s current patent system. The UK’s participation in the European patent system is governed by a separate agreement, namely the European Patent Convention. The Convention is independent of any changes in the relationship between the UK and the EU. Patent owners and those seeking patent protection in the UK should are not likely to see a change when the Brexit is implemented. Current and future UK patent holders will still resolve disputes through UK courts.
Likewise, copyright holders in the UK are unlikely to see changes. Copyright law in the UK has been harmonized with European copyright law through a series of treaties enacted outside of the EU and directives implemented through UK legislation.
Likely to Be Affected: Unitary Patent and Unified Patent Court
Going forward, the Brexit would likely impact the adoption of the European unitary patent, as it would no longer cover the UK and as a result the value of a unitary patent will likely be lessened. The Brexit has also already likely delayed implementation of the Unified Patent Court. The UK was expected to ratify the Unified Patent Court agreement, and one of the Courts of First Instance was to be located in London.
Likely to Be Affected: Trademarks and Community Designs
Holders of European Union trademarks (EUTMs) will likely be directly impacted by the Brexit. Existing EUTMs may no longer extend to the UK. Trademark protection in the UK may need to be obtained through conversion of the EUTM into a UK trademark, or through separate application. EUTMs relying primarily on use in the UK could face revocation for non-use in the EU. Pan-European injunctions enforcing EUTM rights may also no longer cover the UK, and rights holders may need to initiate separate enforcement proceedings in the UK.
European Community Designs, which offer protections similar to U.S. design patents, may not provide protection in the UK post-Brexit either. Both Registered Community designs (RCD) and unregistered designs are likely to be impacted. Current RCD holders will need to convert their RCDs into a UK-registered design to maintain protection in the UK. Likewise, unregistered Community designs would not extend into the UK, and protection may not exist if the unregistered design was only made available to the public in the UK.
Owners of EUTMs and Community design rights will need to wait and see whether current European rights can be converted into UK rights as part of the terms of the Brexit, or if the UK adopts other mechanisms to protect current rights holders.
When the UK will ultimately leave the EU and the true impact of this departure on European IP rights and the costs associated with obtaining those rights remains to be seen. We will continue to closely monitor and report on any and all developments in this regard. Stay tuned.