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British Prime Minister Theresa May, right, hosts the president of the European Parliament, Martin Schulz, for talks Sept. 22 at 10 Downing Street in London. (AP photo)
British Prime Minister Theresa May, right, hosts the president of the European Parliament, Martin Schulz, for talks Sept. 22 at 10 Downing Street in London. (AP photo)

Brexit and patent, trademark protection

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The uncertainty and confusion caused by the United Kingdom’s vote to exit the European Union earlier this year can be felt across all areas of business law—intellectual property law included. While the Brexit vote has no effect on IP protection in the short term, the long-term fallout is likely to impact the ease with which U.S. applicants can secure European-wide IP protection.

Patents

Jay Erstling

Jay Erstling

The good news when it comes to patents is that Brexit will not affect European patents or patent applications. European patents are granted by the European Patent Office, which is not an EU institution. EU membership is not a condition of membership in the EPO, and non-EU member countries, such as Switzerland and Norway, have long been EPO members. As a result, patent holders will continue to be able to validate their granted European patents in the U.K., and European patents that have already been validated will continue in force.

The ramifications of Brexit on patent protection become more complex in the longer term. The EU was moving toward the launch of a unitary patent—a European patent that would have effect throughout the EU—and an EU-wide Unified Patent Court. Neither has come into effect, and without the participation of the U.K., it is anyone’s guess as to what the future will hold. Adding to the uncertainty, the U.K. is one of the countries that must ratify the Agreement on the Unified Patent Court to make the court operational, and London was appointed to host one of the court’s central divisions.

Trademarks and Designs

Brexit will have a greater impact on trademark and design protection in the U.K., but presumably not before the U.K. will have the opportunity to minimize its effect. Currently, trademarks and designs can be registered in the U.K. either by filing national applications or by applying for the registration of an EU trademark or a Community (EU) design. In both cases, registration provides unified and unitary protection in all EU member countries. EU registrations will no longer cover the U.K. when the country leaves the union, which raises the question of whether existing registrations will remain effective in the U.K. Fortunately, the U.K. is fully expected to adopt transitional arrangements that will either extend EU registrations automatically or require a simple re-registration procedure. In the meantime, companies may wish to consider applying for national registration in the U.K. in addition to EU registration, especially if their business activities are U.K.-centered. In the end, however, it is important to keep in mind that no rights are likely to be lost.

Another concern is that if the U.K. leaves the EU, it will no longer be bound by trade agreements that the EU has signed. The draft Transatlantic Trade and Investment Partnership (TTIP), under negotiation between the U.S. and the EU since 2013, contains a proposed chapter on IP. If TTIP takes effect, the U.K. might not be covered unless it negotiates participation separately from the EU.

Fortunately, companies have time to prepare for the unknown when it comes to continued IP protection in Europe. The surprising and unprecedented Brexit vote was just the start of a lengthy process of withdrawal from the EU. The first official step will occur when the U.K. invokes Article 50 of the Treaty on European Union, which allows a member country to notify the EU of its withdrawal and obliges the EU to begin the complex and cumbersome process of negotiating a withdrawal agreement. Britain’s prime minister, Theresa May, has indicated she will trigger Article 50 in early 2017. The U.K. is not likely to leave the EU until the withdrawal agreement enters into force, which at a minimum will be two years from the date of the notification of withdrawal. The European Council may also vote to extend the two-year period, a result that many commentators think is inevitable.

 Jay Erstling is an attorney with Patterson Thuente IP and an adviser on intellectual property matters to clients doing business on an international scale, as well as those considering expanding into global markets. He is a former Director of the Office of the PCT and serves as a consultant to businesses and governments on intellectual property reform, TRIPS compliance and international business practices.

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