February 1, 2023

Volume XIII, Number 32

Advertisement

February 01, 2023

Subscribe to Latest Legal News and Analysis

January 31, 2023

Subscribe to Latest Legal News and Analysis

January 30, 2023

Subscribe to Latest Legal News and Analysis
Advertisement

The Impact of Brexit on European Intellectual Property Protection

On June 23, 2016, the United Kingdom (UK) voted to leave the European Union (EU), a decision that has been dubbed “Brexit.” Assuming British leadership follows the outcome of the vote, the UK will formally notify the EU of its intention to leave and begin a two-year period during which the two parties must formalize the terms of exit. Until the terms are formalized, the UK remains a member of the EU.

Among its many economic and political effects, the decision will impact intellectual property rights in the UK and the EU. Based on our analysis and discussions with our European and UK associates, we have summarized below the impact on patent, design, and trademark rights and their related agreements.

Patents

It is important to first note that the European Patent Convention is independent of the European Union, and therefore the UK’s membership in the European patent system is not affected by the Brexit decision. That is, an applicant can still protect its invention in the UK by filing a European patent application and designating the UK.

However, the Brexit decision will likely delay the implementation of the unified patent system, which was scheduled to take effect in 2017. The unified patent system would create a Unitary Patent effective in all EU member states and enforceable through a new Unified Patent Court. As one of the top three countries for patent filings in the EU, the UK’s ratification was necessary for the system to come into existence. The agreement will need to be revised and ratified once the UK leaves the EU, which may cause a delay of several years. If the unified patent system is eventually implemented, any rights under a Unitary Patent would not extend to the UK. However, protection in the UK would still be available through a European patent (as discussed above) or a UK national patent.

Industrial Designs and Trademarks

The UK will remain a member of the EU until the terms of the exit are finalized, and European Community Designs (ECDs) and European Union Trademarks (EUTMs) will remain valid in the UK during that time. However, it is unclear how these rights will be affected once the UK ceases to be a member of the EU. It is possible that EUTMs and ECDs will cease to cover the UK, and intellectual property owners could lose rights in the UK if they do not own corresponding national registrations. However, it seems more likely that the UK will implement a procedure for converting EUTMs and ECDs to national registrations without any loss of priority, or enact national legislation which would extend EUTMs and ECDs to the UK.

Agreements

Finally, it is difficult to predict how the Brexit vote will affect existing agreements, although it is advisable to begin reviewing any documents for potential issues. For example, if an agreement or license refers to the EU or to specific EU laws, the parties should consider whether an amendment is necessary to include a reference to the UK or UK-specific laws.

The significance of the Brexit vote may not be fully understood for several years. In the meantime, we will continue to monitor and provide updates on developments that may impact intellectual property rights.

©2023 MICHAEL BEST & FRIEDRICH LLPNational Law Review, Volume VI, Number 176
Advertisement
Advertisement
Advertisement

About this Author

Richard Kaiser, Michael Best, patent prosecution lawyer, inter partes review legal counsel,
Partner

Rich has a strong track record in intellectual property law, specializing in all stages of the patenting process for mechanical arts and technologies. He helps clients build patent portfolios, avoid or invalidate competitor patents, and defend against infringement claims.

Through his extensive experience with utility and design patents, Rich has become a trusted, long-term business partner to producers and manufacturers. Rich works closely with clients, providing meaningful guidance on their U.S. and international patent strategies. Clients...

262-956-6576
Lori Meddings, Michael Best Law Firm, Trademark and Copyright Attorney
Partner

Lori represents clients based in jurisdictions around the world, including Australia, Canada, Germany, Italy, Korea, and the United Kingdom. Many of Lori’s clients conduct business on an international scale and require advice and protection to effectively compete in the global marketplace.

Recently, Lori has focused her holistic international perspective, business acumen, and practical approach to fighting counterfeit goods produced in China and sold in that country and internationally. Clients have turned to Lori as they seek to seize...

608-283-0128
Brian Marstall, Michael Best Law Firm, Intellectual Property and Patent Attorney
Associate

Brian’s practice is dedicated to obtaining robust patent protection for his clients’ innovation and developing strategies to minimize their patent infringement risk.

Brian has significant experience counseling clients with respect to a wide range of intellectual property issues, including patentability, clearance, and invalidity of utility and design patents. He regularly represents clients in the mining and heavy manufacturing industries, and he has significant experience in technologies including underground and surface mining machines, ...

202-747-9563
Advertisement
Advertisement
Advertisement