On 23 June the UK voted to leave the EU. Brexit, as it is known, will have a profound effect on many aspects of our lives as IP practitioners. Today we attempt to answer some of the more pressing questions and to explain what the process involves and how it may affect our clients. For the processing of UK and European patent applications the effect will be minimal. In time there will be greater consequences for trade marks and designs.

Has the UK now left the EU?

No. The vote to leave starts the process of withdrawal. Article 50 of the Treaty on European Union provides for a minimum of two years to complete the exit process. However as no member state has left the EU before, we are in uncharted territory. Many commentators expect the process to be slow and complex and to take many years, possibly up to 10 years.

Patents

How does Brexit affect my European patent applications and patents?

In short it doesn’t. European Patents are granted by the European Patent Office which is not an EU body. The European Patent Convention (EPC) already includes non-EU countries such as Switzerland and Norway. At present patents are validated on grant in individual countries and this will continue.

So my existing European Patents (UK) are unaffected?

Correct.

Will Reddie & Grose be able to continue acting as representatives before the EPO?

Yes, there will be no change to the existing arrangement under which any national of a European Patent Convention member state, who is also resident in a member state, can act on behalf of applicants from non-member states. This will not change when the UK eventually leaves the EU.

How about the Community Patent when it comes into force?

The Community Patent (EU Patent) is simply treated as a designated office in the European patent application and is no different in this respect to the designation of any other country at present. At grant the applicant chooses in which countries to validate the patent and EU will be one of those choices. The pre-grant application process and the post grant opposition process will be handled in exactly the same way as it is at present.

How about the Unified Patent Court?

This is where things begin to get tricky. We simply do not know at present. The UPC has not yet come into effect and cannot do so until the agreement has been ratified by 13 EU member states including the UK as one of the three countries with largest number of European Patent designations in force. We wait for further information as to how the ratification process will be affected. London was scheduled to host one of the three central divisions of the UPC and the future of that court must now be uncertain.

Trade marks

Present position

At present a trade mark may be protected in the UK either by a national UK or an EU registration both of which may be obtained directly or via an International Registration under the Madrid protocol. Ultimately, EU registrations will no longer cover the UK and we expect there to be a transitional arrangement governing existing EU registrations and their effect in the UK. At this stage it is mere speculation as to whether existing EU registrations will extend automatically to the UK or whether some sort or re-registration process will be required. In any event this will not happen for at least two years and probably much longer.

What should I do in the meantime?

Keep on filing EU trade mark applications as normal. We will let you know when transitional provisions are fixed. If your EU marks are predominantly used in the UK you should discuss with your Reddie & Grose attorney whether to file additionally in the UK as, ultimately, UK use will not be treated as use of the EU mark.

Can Reddie & Grose continue to represent me in respect of trade marks before EUIPO?

Until the exit process has been completed we can continue to represent you. After that the position is not clear. If the UK decides to remain in the European Economic Area (EEA), which presently includes EU countries, Norway, Iceland and Lichtenstein, we will still be entitled to represent you before EUIPO in respect of trade marks. However, UK now has to decide whether to join the EEA as a sovereign country.

Designs

Present position

As with trade marks, designs may be protected either through UK national applications or through EU applications. Both routes are also available through the Hague Agreement International route. Again we expect there to be transitional provisions governing the applicability of EU registrations to the UK but these will not be in place for at least two years, until the UK actually leaves the EU, and probably much longer.

What should I do in the meantime?

Carry on filing EU design applications as normal.

Can Reddie & Grose continue to represent me in respect of designs before EUIPO?

Until the exit process has been completed we can continue to represent you. After that the position is not clear. As with trade marks, discussed above, the position may depend on whether the UK joins the EEA. However, for trade marks it is clear that UK practitioners, as EEA nationals, would be entitled to act. It is not as clear whether this applies to designs also.

The original designs Directive limited representation to nationals and residents of EU member states. However, the entry into force of regulation 2015/2424, which established the EUIPO in March 2016, deals with representation before EUIPO generally and does not distinguish between trade marks and designs. It will become clear, in due course, what is the true position and will only be relevant if the UK joins the EEA.

Future developments

We will continue to send regular briefing updates as the positions become more clear. In the meantime please raise any questions you may have with your usual Reddie & Grose contact.