If you’re a US inventor or business with intellectual property (IP) interests in the United Kingdom or European Union, you can rest easy that the Brexit vote poses no immediate problem for securing patents, trademarks or design protection in that part of the world. However, in the longer term, the Brexit vote aftermath could result in challenges for all holders of IP in Europe and elsewhere.
Although it is impossible to predict with certainty the fallout from Brexit, Jay Erstling – International Intellectual Property Attorney with Patterson Thuente Pedersen, P.A. – shares some assumptions that can safely be made about Brexit’s impact on the protection of intellectual property.
On June 23rd, the UK voted to leave the EU. That unprecedented vote, known as Brexit, was just the start of the process of withdrawal. The first official step will occur when the UK invokes Article 50 of the Treaty on EU, which allows a member country to notify the EU of its withdrawal and obliges the EU to begin the complex and cumbersome process of negotiating a withdrawal agreement. The UK will not likely leave the EU until the withdrawal agreement enters into force, which at a minimum, will be two years from the date of the notification of withdrawal. The European Council may also vote to extend the two-year period, a result that many commentators think is inevitable.
So what does all this mean for your intellectual property?
The good news is that Brexit will have no effect whatsoever on European patents or patent applications. European patents are granted by the European Patent Office, which is not an EU institution. EU membership is not a condition of membership in the EPO, and non-EU member countries, such as Switzerland and Norway, have long been EPO members. As a result, you will continue to be able to validate your granted European patents in the UK, and European patents that have already been validated will continue in force. Similarly, UK patent attorneys will be able to continue acting as representatives before the EPO.
In the longer term, the picture gets a little murky. The EU was moving toward the launch of a unitary patent—a European patent that would have effect throughout the EU—and an EU-wide Unified Patent Court. Neither has come into effect, and without the participation of the UK, it is anyone’s guess as to what the future will hold. Adding to the uncertainty, the UK is one of the countries that must ratify the Agreement on the Unified Patent Court to make the court operational, and London was appointed to host one of the court’s central divisions.
President of the European Patent Office, Benoit Battistelli, issued the following statement “The Office underlines that the outcome of the referendum has no consequence on the membership of the UK to the European Patent Organisation, nor on the effect of the European Patents in the UK. Concerning the Unitary Patent and the Unified Patent Court, the Office expects the UK and the participating Member States will find a solution as soon as possible, which will allow a full implementation of these so-long awaited achievements.”
Trademarks and Designs
Brexit will have a greater impact on trademark and design protection in the UK, but presumably not before the UK will have the opportunity to minimize its effect. You may currently register trademarks and designs in the UK either by filing national applications or by applying for the registration of an EU trademark or a Community (EU) design. In both cases, registration provides unified and unitary protection in all EU member countries. EU registrations will no longer cover the UK when the country leaves the Union, which raises the question of whether existing registrations will remain effective in the UK. Fortunately, we fully expect the UK to adopt transitional arrangements that will either extend EU registrations automatically or require a simple re-registration procedure.
In the meantime, you may wish to consider applying for national registration in the UK in addition to EU registration, especially if your business activities are UK-centered. In the end, however, it is important to keep in mind that no rights are likely to be lost.
Reprinted with permission: Read the original http://ptslaw.com/2016/06/brexit-and-your-ip/
About the Author: Jay Erstling is an international intellectual property attorney with Patterson Thuente Pedersen, P.A. He can be reached firstname.lastname@example.org