Brexit-proof Intellectual property rights now

Businesses having any dealings outside the UK are thinking hard about the implications of Brexit. For UK business, Intellectual Property (IP) rights '“ trademarks, patents and registered designs in particular '“ often have a European, or indeed a specifically European Union (EU), dimension. Is action required? At this early stage, a watching brief in respect of existing rights, with some extra thought for new work, would seem appropriate. The transition from where we are now to where we will be '“ in three, five or ten years' time '“ is a path not yet travelled. The legal changes for some aspects of IP law are unknown.

A reasonable supposition is that the intent will be to have transition arrangements for IP matters that are designed to preserve existing rights, as far as possible, for UK businesses.

For patents, the explicit connection to the EU legal system is limited. The current regime, with various options for obtaining patents for inventions in the UK and abroad, will be maintained. The patent system includes European Patents that are granted by the European Patent Office (EPO) and for many businesses this has been the most cost effective and convenient way of seeking patent protection in their selected European countries.

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The governing legislation, the European Patent Convention (EPC), is simply not a piece of EU legislation and the present situation for patents will remain.

For other IP rights the situation is more complex. The Community Trade Mark, Registered Community Design and Community Plant Variety Rights are IP rights derived from Regulations of the EU. Certain IP rights in relation to medicinal products are also EU-related legislation. Import regulations relating to IP protected products and other complex cross-border legislation may change depending on the terms of leaving the EU.

It has been convenient and relatively inexpensive to make use of the Community Trade Mark and Registered Community Design provisions to obtain IP rights extending across the EU. These options remain of value, even if the trade mark or design owner was or is not sure they would make use of these rights beyond the shores of the UK.

For these IP rights, the legal position in the UK is derived from EU law. Therefore a good deal of work will be required to smooth the transition from the old to the new legal framework.

Whilst we know that the decision to leave the EU will not affect holders UK trade marks or UK design rights, holders of EU (Community) trademarks or Community Registered Designs should give matters some consideration. The continuing validity of such EU-based rights within the UK is uncertain. As the UK moves outside the EU transition arrangements will likely be put in place.

Such transitional arrangements could be designed so that a previous “EU right” can remain effective in the UK and/or allow conversion to a new right that is effective in the UK. In the meantime, when making new applications, businesses with trade mark and design interests should at least consider the option of adding UK trade mark and UK registered design protection to Community filings they may wish to make.

A clearly laid out briefing paper has been published by the Chartered Institute of Patent Attorneys, outlining the issues and potential impact of legislative changes.

Mike McPherson is a European Patent Attorney with Marks & Clerk