WHAT JUST HAPPENED?

The Trade and Co-operation Agreement (‘TCA’) came into force following Brexit in January 2021.

WHAT DOES THIS MEAN?

Upon the UK leaving the EU, EU treatises and free movement rights cease to apply in the UK. Nevertheless, the TCA has had little impact on IP rights as it only provides minimum measures for IP protection with scope for implementing stricter measures. This article will therefore specify how patents are largely left unaffected by Brexit.

HOW DOES THIS IMPACT THE LEGAL SECTOR?

Upon being granted a patent and after subsequent validation in the UK, EU patents will still be afforded the same legal effect in the UK, as those inventions patented by the UK Intellectual Property Office (‘UK IPO’). Patents covering the UK will continue to be granted by both the UK IPO and the European Patent Office (‘EPO’), and applications can be filed directly with either body, or can be made pursuant to an international patent application filed under the Patent Cooperation Treaty. [1]

European Patent Convention:

The UK is still one of the 38 contracting states to the European Patent Convention (‘EPC’). If an application is filed with the EPO, on grant an applicant will be able to request validation in the UK as well as other countries of interest. [2]

Furthermore, under Article 58 EPC, anyone can file a patent application with the EPO, irrespective of nationality, residence or place of business. UK citizens and natural persons domiciled in the UK, as well as legal persons based in the UK will still be able to file European patent applications.

Paris Convention:

Moreover, the UK will remain a member of the Paris Convention. The Convention provides that, with regards to the protection of industrial property, each Contracting State must grant the same protection to nationals of other Contracting States that it grants to its own nationals. [3]

Nationals of non-Contracting States are also entitled to national treatment under the Convention if they are domiciled or have a real and effective industrial or commercial establishment in a Contracting State. [4]

In addition, the Convention also provides for the priority in the case of patents (and utility models), marks and industrial designs. This means that after a regular first application has been filed in one of the Contracting States, the applicant may, within 12 months (for patents and utility models), apply for protection in any of the other Contracting States. [5]

All of these individual aspects of the Paris Conventions means that UK patent applicants can still apply for a patent registration in other countries, and vice versa.

Unified Patent Court:

However, things may be different for the UK in the realm of the Unified Patent Court.

Discussions are still ongoing for the Unified Patent Court, which is envisioned to have jurisdiction over all current and future European patents and designated to participating EU Member States which have ratified the UPC Agreement (‘UPCA’). [6] The Unified Patent Court covers most of Europe with the purpose being to hear and determine patent disputes on a pan-European basis.

Notably, the UK has joined Spain, Croatia, and Poland in staying out of the UPCA. This means that a pan-European Unitary Patent jurisdiction will not cover the UK, and the UK will not be able to gain access to unitary patent rights. A unitary patent right is established via enhanced cooperation and provides a single patent right over an invention that includes all the Member States which took part in the enhanced cooperation. [7]

By Nickolaus Ng

ASSESSING FIRMS:

#CliffordChance #Fieldfisher #Bird&Bird #NortonRoseFullbright #OsborneClarke

REFERENCES:

[1] Alice Chaplin, ‘Impact of Brexit on IP Law’ (A&L Goodbody KnowledgePlus, 24th February 2021) <https://knowledgeplus.algoodbody.com/blog/impact-brexit-ip-law#page=1>

[2] European Patent Office, ‘Notice from the European Patent Office dated 29 January 2020 concerning the United Kingdom's withdrawal from the European Union on 31 January 2020’ <https://www.epo.org/law-practice/legal-texts/official-journal/information-epo/archive/20200129.html>

[3] WIPO, ‘Summary of the Paris Convention for the Protection of Industrial Property (1883)’ <https://www.wipo.int/treaties/en/ip/paris/summary_paris.html>

[4] ibid

[5] ibid

[6] Herbert Smith Freehills, ‘The Unified Patent Court and Unitary Patent – Introduction’ (Legal Briefings, 11th December 2020) <https://www.herbertsmithfreehills.com/latest-thinking/the-unified-patent-court-and-unitary-patent-–-introduction>

[7] Regulation 1257/2012 of 17th December 2012 (Unitary Patent)

Disclaimer: This article (and any information accessed through links in this article) is provided for information purposes only and does not constitute legal advice.