Brexit: Who's got custody of your IP?
Updated: Aug 27, 2020
After a few PM changes, multiple failed attempts to get the parliament to agree on how to properly do the exiting, and several requests for extension from the EU, the UK has finally said ‘it's not me...it's you...’ and left the EU on 31 January 2020. Well sort of...but not really...as the relationship is currently officially in the transition period which will...er...definitely/likely/potentially/possibly end on 31 December 2020.
Like all messy divorces, unfortunately, it's usually the little ones that suffer the most. Likewise many owners of regional-level intellectual property rights (IPR) in Europe such as a European Patent, Trademark or Design will wonder how these rights are going to be affected by quite possibly the most dramatic divorce of all time. Yes, it even makes Kylo and Natasha's Marriage Story seem like a gentle breeze in a doll-house teacup!
So, has your European Patent, Trademark or Design already lost its effect in the UK? Or what if you want to apply for a European Patent, Trademark or Design? Would these applications still cover the UK?
European Patents are unaffected by Brexit and will continue to have an effect in the UK. This is because European patents are granted under the European Patent Convention (EPC) which is independent of the EU and of which the UK is a member. So long as the patent is maintained and not cancelled, you need not worry about your European Patent losing its effect in the UK before the patent term ends.
For present and future applications for a European Patent, there is no need to file a separate application into the UK for the sole purpose of obtaining patent coverage in the UK as a European Patent application will still designate the UK.
European Trademarks and Design
Trademarks and industrial designs are a different matter entirely. An EU Trademark (EUTM) or Registered Community Design (RCD) covers all EU member states, so the UK not being a part of the EU would mean that EUTMs and RCDs will no longer have an effect in the UK.
Thanks to the Withdrawal Agreement, owners of registered EUTMs and RCDs need not make a mad scramble to the UK Intellectual Property Office (UKIPO) to re-register their trademarks and designs as these EUTMs and RCDs will continue to be in effect in the UK during this transition period and comparable rights will be created at the end of the transition period.
However, if a EUTM or RCD application is still pending at the end of the transition period, right owners will have to apply to the UKIPO to have these rights registered in the UK within 9 months from the end of the transition period. Such applications will retain the filing date of the original EUTM or RCD applications, so there is no need to worry about any loss of priority.
After the transition period, applicants will have to consider if they want to file applications at the national level in the UK in addition to a EUTM or RCD application as a EUTM or RCD will no longer cover the UK as before.
Still not too sure who's gonna have custody to your IP babies? Why not give us a holler? After all, we’re here to help!