Brexit, the transition period, and what it means for IP rights

The UK and Europe have ratified the Withdrawal Agreement, and the UK has now left the EU. So, what does that mean for IP rights?

Firstly, although the official leave date is 31st January 2020, the UK will enter a transition period from 1 February 2020 to 31st December 2020. During this time EU law will effectively continue to operate as it does now in the UK, so there are no immediate changes. However, there are some changes to IP law that are set to take effect at the end of the transition period.

  • There are NO CHANGES to the European patent system.
    • The European Patent Office (EPO) is not an EU agency, and leaving the EU does not affect the current European patent system.
    • The UK will continue to be available using the European Patent system and existing European patents covering the UK are also unaffected.
    • European patent attorneys based in the UK continue to be able to represent applicants before the EPO.
  • EU Trade Marks ARE AFFECTED
    • EU Trade Marks will no longer cover the UK after the transition period.
    • EU Trade Marks will continue to extend to the UK during the transition period.
    • At the end of the transition period, the UK Intellectual Property Office (UKIPO) will automatically create comparable UK Trade Mark Rights for Registered EU Trade Marks.
    • At the end of the transition period if there are pending EU Trade Mark applications, there will be a 9-month period to apply in the UK for the same rights.
    • UK legal representatives will be unlikely to have the right to represent clients in relation to EU Trade Marks before the EU Intellectual Property Office (EUIPO) after the transition period, other than for cases which are ongoing at the end of the transition period. As Definition IP has an Irish Office, we will continue to be able to act for Clients in respect of their trade marks before the EUIPO as well as before the UKIPO.
  • EU Designs ARE AFFECTED
    • EU Designs will no longer cover the UK after the transition period.
    • EU Designs will continue to extend to the UK during the transition period.
    • At the end of the transition period, the UKIPO will automatically create comparable UK Design Rights for Registered EU Designs.
    • At the end of the transition period if there are pending EU Design applications, there will be a 9-month period to apply in the UK for the same rights.
    • UK legal representatives will be unlikely to have the right to represent clients in relation to EU registered designs before the EUIPO after the transition period, other than for cases which are ongoing at the end of the transition period. As Definition IP has an Irish Office, we will continue to be able to act for Clients in respect of their design rights before the EUIPO as well as before the UKIPO.
  • EU unregistered Design rights ARE AFFECTED
    • For unregistered design rights (Unregistered Community Design (UDR), designs disclosed in the UK before the end of the transition period will continue to be protected in the UK for the remainder of their three-year term.
    • Designs disclosed in the UK after the end of the transition period may be protected in the UK by a Supplementary Unregistered Design (SUD), a new UK unregistered design right which will be similar to the UCD. SUD will be established by first disclosure in the UK after the transition period. First disclosure in the EU will not establish SUD, however it may destroy novelty in that design, should you later seek to claim unregistered UK rights.
  • Reciprocal protection for Copyright is NOT AFFECTED, but some cross-border copyright arrangements which are unique to EU member states ARE AFFECTED
    • Leaving the EU does not affect reciprocal protection for copyright works between the UK and the EU as this is covered by international treaties rather than EU law.
    • Cross-border copyright arrangements which are unique to EU member states, such as cross-border portability of online content services, are likely to be affected after the transition period.
    • Any database rights that exist in the EU and UK at the end of the transition period will continue to be recognised in both territories for the remainder of their term.

There are also other IP rights such as SPCs, and International Registrations under the Madrid and Hague Agreement which may be affected. The exhaustion of IP rights system will also be affected. If you have any questions about how these changes may affect you please contact us.

 

In view of the above, our top tips are:

  • If you are planning to file or currently have any pending European Patent Applications or International applications designating Europe you should continue with your plans – European Patents are not affected.
  • If you are planning to file EU Trade Mark or Design Applications consider filing them sooner rather than later to ensure they have time to register before the end of the transition period (currently 31 December 2020)– this will ensure that an comparable UK right will automatically generate.
  • If you have any Registered EU Trade Marks or Designs, be aware that a comparable UK right will be automatically generated at the end of the transition period. You should check that there are no third-party agreements in place which may need to be updated or which would be contravened by the granting of the comparable rights in the UK. You may also need to notify any licensees of the right. There is an option to opt-out after the right has been generated, if needed.
  • If you currently rely on Unregistered Design Rights, you will need to carefully consider where any initial disclosures are made.
  • Check your UK representative has a plan in place to allow them to continue to act for you in relation to EU Trade Mark and Design rights after the transition period. As Definition IP has an Irish Office, we will continue to be able to act for Clients before both the EU Intellectual Property Office and before the UKIPO.

 

If you would like more information about any of the above, please contact Claire Rutherford (Claire.Rutherford@definitionip.com) or Dan Mercer (Dan.Mercer@definitionip.com) on 0191 603 1101 (UK) or Eimear Sampson (Eimear.Sampson@definitionip.com) on (01) 9697808 (Ireland).