The European Commission has released a paper setting out the EU’s position on how existing intellectual property (IP) rights should be treated following the UK’s exit from the European Union.
The EU’s position aims to ensure continuity in the protection provided by pre-Brexit IP rights, and to reduce uncertainty for rights holders.
In short the EU recommends that, on the date that Britain leaves the EU, any existing “unitary” IP right which is based on EU law (which prior to Brexit would cover all 28 EU member states including the UK) should automatically be converted into:
- an IP right covering the 27 remaining EU states (the “EU27”); and
- a similar IP right enforceable in the UK.
This would apply to unitary rights including European Community trade marks, registered designs, unregistered designs, plant varieties and geographical indications. Importantly, however, this seems to apply to granted rights only.
For rights that have been applied for, but not granted, prior to the UK’s withdrawal (pending Community trade mark applications, for example), the EU recommends that the applicants should be entitled to retain their priority date when applying for an equivalent IP right in the UK. This suggests that for pending rights, rights holders would have to actively re-apply for protection in the UK.
The EU’s position is good news for rights holders who wish to continue to exploit existing EU-based IP rights in the UK, and who would suffer were the UK portion of these rights to simply vanish after Brexit.
The EU’s paper suggests the sort of transitional provisions which have been expected since Britain’s vote to leave the EU. However, these suggestions will be subject to negotiation with the UK as part of any Brexit agreement. As the UK’s position on this issue is still unclear, we do not yet know whether the EU’s recommendations will be adopted.
The EU’s Position in More Detail
Unitary (EU-wide) Intellectual Property Rights
Includes: European Community trade marks, registered designs, unregistered designs, plant variety rights, and geographical indications.
Granted Unitary Rights – The holder of any IP right having unitary character within the Union and granted before the UK’s withdrawal date should, after that date, be recognised as the holder of an enforceable intellectual property right in relation to the United Kingdom territory, comparable to the right provided by Union law. New UK rights should be created automatically, at no cost to the rights holder, and with minimum administrative burden to the rights holder.
Pending Applications – Where a unitary EU right has been applied for, but not granted, prior to the UK’s withdrawal date, the holder should be entitled to keep the benefit of any priority date when applying after the withdrawal date for an equivalent intellectual property right in the UK.
Supplementary Protection Certificates (SPCs)
Where a person has applied for an SPC (or a paediatric extension to an SPC) prior to the UK’s withdrawal date from the EU, and that application has not been granted prior to withdrawal, the applicant should continue to be entitled to obtain that right in the UK. Any certificate so granted should give equivalent protection to that provided under EU law.
Legal Protection of Databases
Databases that are protected in the UK under EU law prior to the withdrawal date should continue to be protected in both the UK and the EU27 following withdrawal.
Exhaustion of Rights
IP Rights which have been exhausted in the EU before the UK’s withdrawal date should remain exhausted in both the UK and the EU27 following withdrawal.
And a note on Patents
European Patents are granted by the European Patent Office, which is not an EU body. Therefore, the existing European Patent (EPC) system will be unaffected by Brexit.
As for the expected European Unitary Patent system, which is based on EU law, the ratification process is still ongoing. The EU’s paper makes no specific mention of the unitary patent. It seems highly likely, however, that if the unitary patent system were up and running prior to the UK’s withdrawal date, granted unitary patents would be treated in the same way as the unitary IP rights discussed above.
The EU’s position paper can be read in full here
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.