How has protection of IP in Europe changed following BREXIT?
Patents are unaffected by the UK’s exit from the EU. This is because the European Patent Organisation (EPO) is not an EU institution, so there is no change in European patents. European Patent Attorneys based in the UK can continue to file and prosecute patents in Europe.
This is a surprise to many outside Europe.
Patents are the centrepiece, the crown jewels, of an IP strategy, providing gravitas upon market entry in a new jurisdiction, and the foundation for cross-licencing to facilitate market entry. Indeed, European patents remain valuable lynchpins of many an IP strategy. But patent applicants may wish to bear in mind that direct applications to the UK can be a practical alternative, particularly for smaller US companies. The UK patent procedure is cheaper and can result in granted patents within 2 years, quite a bit speedier than the EPO. Furthermore, acceleration is possible at both the UK IPO and the EPO for Green tech and via PPH type arrangements and both EP(UK) and UK patents can form the basis of re-registered rights in Hong Kong.
In summary, for new patent protection, a European patent application covering all 38 EPO member states, in other words all 27 EU countries and the 11 non-EU countries, now including the UK, can be filed. Nothing has changed in patent prosecution; everything is the same as before.
For existing registered EU designs, the UK IP Office has created ‘cloned’ or ‘comparable’ rights in the UK to mirror existing registered EU designs as at 31 Dec 2020. These ‘cloned’ design rights are derived from the corresponding registered EU designs at the EU IP Office (EUIPO). The ‘cloned’ UK registered design has the same number as the corresponding EU design but has a different prefix. The number allocated to the ‘cloned’ UK registered design is the full 13-digit RCD number prefixed with the digit 9.
Existing RCD number Re-registered UK design number
Any pending application for an EU registered design as at 31 Dec 2020 will not automatically have a comparable UK registered design application created, and it will be necessary to re-file the application at the UKIPO within a nine-month window i.e. by 30 September 2021, to claim the same filing, priority, etc. dates as the pending EU design application.
For new design protection in both the UK and EU, applications must be filed in both jurisdictions. So there is a change here.
For existing registered EU trade marks, the UKIPO has created ‘cloned’ or ‘comparable’ rights in the UK to mirror existing registered EU trade marks as at 31 Dec 2020. These ‘cloned’ UK trade marks are derived from the corresponding registered EU trade marks at the EU IP Office (EUIPO). The ‘cloned’ UK trade mark has the same number as the corresponding EU trade mark, but a different prefix. The number allocated to the ‘cloned’ UK trade mark is the last eight digits of the corresponding EU Trade mark prefixed with UK009.
Existing EU trade mark Comparable UK trade mark
Again, any pending application for an EU trade mark as at 31 Dec 2020 will not automatically have a comparable UK trade mark application created. It will be necessary to re-file the application at the UKIPO within a nine-month window i.e. by 30 September 2021, to claim the same filing, priority, seniority, etc, dates as the pending EU trade mark application.
For new trademark protection in both the UK and EU, applications must be filed in both jurisdictions. A change here too.
UK and European patents continue unaffected by Brexit.
For both registered EU designs and trade marks, a ‘cloned’ right has been created in the UK. No formal action is necessary, but it is important to docket the existence and the renewal dates of the ‘cloned’ rights in the UK in your docketing systems, and advisedly put in place a UK address for service.
For pending applications for both EU registered designs and trade marks, consider re-filing these as corresponding UK applications by 30 September 2021. Again it is important to docket this and the renewal deadlines once granted. The UK IPO will not send reminders of this deadline. We advise clients to take decisions and act early, well before this deadline.
See this link for practical guidance: https://www.cipa.org.uk/policy-and-news/brexit-updates/practice-guidance-on-the-transition-period-in-the-withdrawal-agreement-designs/
At Capella IP, we remain ready to assist you. Please get in touch if you have any questions.