Patents, Designs, and Brexit: a short guide

UK voters will go to the polls on 23 June 2016, to decide whether to stay in the European Union (EU) or to leave it in a so-called "Brexit". Here, we consider the possible implications for patent and design rights.

Patents

The European Patent Office (EPO), which administers the current system of centralised examination, opposition, and limitation for European patents, is not an EU body. It is established under the European Patent Convention (EPC), a separate international treaty, which already includes several contracting states outside the EU. A Brexit would have no effect on this system, or the UK's position in it. The UK would remain a contracting state to the EPC and UK-based European patent attorneys would continue to represent clients in matters before the EPO. Likewise, it would be business as usual for maintaining and litigating the UK parts of European patents.

If the UK votes to remain in the EU, then a new Unitary Patent (UP) and Unified Patent Court (UPC) are due to be established in May 2017. The UP will exist as an additional validation option when a European patent is granted by the EPO. It will sit alongside the existing options for validating in individual EPC contracting states (both inside and outside the EU), but it will enable patentees to secure a single patent right covering multiple EU countries with a single validation, whereas currently they need to validate/maintain the patent in each individual country separately.

The UPC will provide a centralised court system with jurisdiction for litigating UPs (as well as "classical" European patents - although it will be possible to opt out, for these patents, during a transitional period lasting at least 7 years).

The future of the UP and UPC is uncertain if the UK votes to leave the EU. It seems unlikely that the plans could go ahead without amendment - not least because the UK is required (as things stand) to ratify the UPC agreement before it can come into force and this ratification will not happen before the June referendum. If the agreement has to be re-negotiated by the remaining parties, following a vote for Brexit, it is difficult to imagine how the current timetable for its coming into force can be met. Also, if the geographic scope of the Unitary Patent were not to include the UK, this would seem to diminish the attractiveness of the UP for patentees, because the UK, as one of the larger world economies, is currently one of the most commonly chosen countries in which to maintain "classical" European patents.

As currently drafted, the rules of procedure would allow most European patent attorneys in the UK to represent parties before the UPC. These rules may or may not be changed in any re-drafting of the agreement following a vote for Brexit; however, it is clear that UK-based European patent attorneys will still be able to represent clients before the EPO. This means that UK-based attorneys will still be able to obtain UPs on behalf of clients, whatever the outcome of the referendum. Likewise, they will continue to act in opposition and appeal proceedings, which will still be heard at the EPO.

Designs

Registered Community Designs (RCDs) for the EU are administered by the EUIPO (formerly OHIM), based in Alicante, Spain. Unlike the EPO, this is an EU body. RCDs are unitary rights covering the entire EU, just like EU Trade Marks (EUTMs). If the UK were to leave the EU, it would no longer be covered by RCDs. However, since national law in the UK is harmonised with the EU design regulation, in respect of registered designs, a national right of practically identical scope already exists. It is generally assumed that, in the event of a Brexit, a transitional arrangement would be put in place by which holders of existing RCDs would be allowed to re-register them in the UK during a transitional period. Thereafter, in order to obtain the same geographic scope, it would presumably be necessary to apply separately for a registered design in the UK, in addition to an RCD application at the EUIPO.

UK law provides for a national unregistered design right, based on principles of copyright law (but subject to very specific geographic qualification requirements). This right would be unaffected by a potential Brexit. EU unregistered designs would cease to apply in the UK, upon secession (unless specific statutory provisions to the contrary were to be put in place).

Current Sentiment

At the time of writing this article, at the start of June, the Financial Times "poll of polls" reported 46% of voters in favour of remaining in the EU, with 43% backing a Brexit.