Brexit: A risk on your IP rights?

On June 23^rd, UK citizens will decide if they want to remain in the European Union. Besides the economic effects of an exit of a UK Brexit on the EU, IP owners should start thinking about both the implications this could have on those of their European IP rights that cover the UK, as well as possible future scenarios for their IP rights in general.

EU Legislation

First of all, it is important to note that this would be the first time in the history of the EU that a Member State leaves the EU, thus it is still not clear how this would actually work on a practical level. Article 50 of the TEU states that, “any Member State may withdraw from the Union in accordance with its own constitutional requirements. The Member State should notify the EU Council and both parties will conclude an agreement setting the arrangements and further relation between the country and the Union. After the Member State gives notice of its withdrawal, there is a two-year term for the treaties of the Union to cease their effects, unless the parties reach an agreement before the two-year term. However, this term might be extended by both parties.” As a result, EU treaties do not give much guidance on the exit of a Member State, making any possible scenario highly speculative.

Copyright protection

Regarding copyright protection, a Brexit would not have any major consequences, since copyright protection is not fully harmonized in the EU as it is. Further, copyright protection is mainly territorial and the UK is member to several International Treaties that cover copyright, thus they it would keep applying their national laws based on international minimum standards of protection.

Patent protection

First, it is worth highlighting that the protection of national Patents as well as national Trademark registrations would of course remain unchanged. Further, Patent applications filed with the EPO would also remain unchanged, since the EPC is not restricted to EU Member States. However, obtaining UK approval for the agreement on a Unified Patent Court might prove to be a challenge, since a Brexit would very likely slow down the implementation of the UPC.

Further, supplementary protection certificates for medicinal products are regulated by EU regulation N. 469/2009 and in Section 128B and Schedule 4A of the UK Patent Act 1977 (as amended), thus in case the UK decides to leave the EU, it is likely that either the Patent Act would have to be amended or a new Act would be required for obtaining SPCs in the UK. Moreover, as would be the case with any other EU right in force at the time of the exit, transitional provisions would have to be put in place in order to maintain the validity of already granted SPC’s in the UK.

Trademark and Design protection at the EUIPO

In the event of a Brexit, UK applicants would no longer be able to obtain protection in the UK by way of filing European trademarks and designs with EUIPO. An applicant could of course still file an EU application but would additionally have to file a separate national UK application. Moreover, according to Article 93.1 of the EU Trademark Regulations, only a legal practitioner in one of the Member States can act as representative in trademark matters before the EUIPO. As a result, UK attorneys would no longer be able to represent Trademarks and Designs before the EUIPO. Furthermore, a Brexit would necessitate transitional provisions for current EU Trademark and Designs registrations for converting these rights into national UK rights, if the owner wishes to maintain protection of such rights in the UK. Further, it would have to be decided if their rights once converted into national UK rights will keep their EU filing date.

Thus there are many uncertainties regarding the likely implications on IP if the UK decides to leave the EU. For now, IP owners should simply be aware that if a Brexit happens -they might face consequences with regard to the protection of their UK IP rights and that they may further have to take additional measures if they want to maintain their IP rights. Until a decision has been made, we can of course not give comprehensive advice on how to proceed, but can only point out the potentially controversial issues. We will of course look into these issues in more detail once the corresponding decisions have been made.

Read the Spanish version of the article published in The Patent Lawyer Mazagine.

Download the PDF article here.

Further information

• Brexit: Negative Folgen für EU-Patentgericht (Legal-Patent - Content in German)