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Brexit – will there be any change for patent owners if the UK leaves the EU?


22nd Feb 2016

The UK Government has set the date for the referendum on whether the UK should remain part of the European Union. This means that we could wake up on 24 June 2016 and find that a majority of the UK population has voted to leave the European Union, and therefore the process of withdrawing from the EU will start.

The European Union (formerly known as the European Economic Community) dates back to the 1950s. Britain joined the EEC in 1973. In 1975, the UK held a referendum on whether or not to remain in the EEC, at which time about 2/3 of those voting were in favour of remaining a member. Since then, more countries have joined the EU, which now has a membership of 28 countries. If the UK voted to leave the EU, they would be the first member country of the EU to leave.

In an earlier post, Zack Mummery considered some of the possible implications of a British exit (Brexit) from the EU for intellectual property. Zack considered whether the UK leaving the EU may stop the proposed Unitary Patent system and concluded that it probably will not. He also considered the effect on Community Trade Marks and Community Design Registrations: something will need to be put in place so that owners of existing Community rights that currently cover the UK will still have protection in the UK after leaving the European Union.

Now that the date for an EU referendum is set, we consider whether there are any implications for patent owners if the UK votes to leave the EU, and whether this changes the way that innovators will be able to obtain patent protection covering the UK. The short answer is that the current position is likely to be unchanged, but that some of the future alternatives that would be available with the proposed Unitary Patent system will not be available for protection or litigation in the UK.

Currently, applicants can obtain patent protection in the UK either by filing a UK national application at the UK Intellectual Property Office, or by filing a European patent application at the European Patent Office (EPO) and, once this is granted, validating this in the UK. Neither of these routes for obtaining UK patent protection are dependent upon the UK being part of the European Union.

The granting of European patents by the EPO is governed by the European Patent Convention. The EPC has been signed by individual countries in an individual capacity, not by being members of the EU. This is illustrated by the fact that a European patent can have effect in 42 countries (38 member states of the EPC, two extension states and two validation states). Of these, only 28 countries are also members of the EU. The UK will remain part of the EPC irrespective of whether the UK remains part of the EU. This means that applicants will continue to be able to designate the UK as part of a European patent application, and any European patents that are granted will continue to be able to be validated in the UK. It also means that UK patent attorneys will continue to be able to act for all clients in proceedings before the EPO, and therefore we will be able to continue to act for you in respect of European patent applications as we have always done.

Litigation in respect of UK national patents and European patents validated in the UK is currently handled through the UK courts. This would also continue in the event of Brexit, and therefore the same attorneys and same judges that are handling and hearing cases today would continue to do so.

Longer term, if and when the proposed Unified Patent Court and Unitary Patent come into being, Brexit would have an impact. The UPC regime will offer participating states a central European court for litigation of patents rather than the current national court system, and the alternative of allowing a single validation to cover all countries party to the Unitary Patent system rather than national validations in each country. In the event of Brexit, future patent litigation relating to UK rights could not be heard by the new Unified Patent Court, but would continue to be heard by the UK national courts. Further, instead of having the option of validating a granted European patent as a Unitary Patent to cover the UK, it will be necessary to validate a European patent in the UK as is done now. Brexit would therefore put the UK on a similar footing to other non-UPC participating states. This does not mean that UK based patent attorneys will not be able to act for applicants wishing to obtain Unitary Patents. Since a Unitary Patent is essentially just a group validation of a conventional European patent, granted by the EPO, any European Patent Attorney will be able to prosecute a European patent application though to grant, and validate this as a Unitary Patent where required.

So, in short, if the UK decides to leave the European Union on 23 June 2016, there will be no change to the current way in which patents can be obtained, maintained or litigated in the UK. However, in the future, if the Unified Patent Court and the Unitary Patent system come into being, this alternative way of having a European patent covering the UK and an alternative Court for litigation of patents covering the UK will not become available.

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.

Author
Steve Howe
Partner
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Would you like to know more? You can talk to Steve Howe who will be able to help. Call +44 (0)20 7539 4449

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