What has happened?
The UK has
voted to leave the EU in a nationwide referendum, by a
margin of 52%-48%.
It is the first time a country has voted to leave the EU.
Greenland (then part of Denmark) did leave the
EEC (as it was) in 1982. But that was a long time ago, Europe
was very different and it was a much smaller territory.
Once the UK leaves, the EU will shrink from 28 member states
to 27. Its population will go down from 508 million to about
How will this affect IP rights?
As of today, nothing changes. EU-derived laws continue to
have effect in the UK. EU trade marks and registered Community
designs will still be valid in the UK.
What happens now?
The process of leaving the EU is set out in
Article 50 of the Lisbon Treaty and negotiation is likely
to take several years (not least because about three-quarters
of members of parliament supported Remain).
UK Prime Minister David Cameron today resigned following the
referendum vote and his successor is likely to be named by
October. It will be down to the successor to trigger the
departure process by notifying the European Council. The
Treaties cease to apply to the UK when the withdrawal agreement
enters into force or two years after the notification, unless
both sides agree an extension.
What will happen to EU IP rights?
|CIPA calls for calm
|CIPA President Tony Rollins
made the following comments in an email:
"The UK will not immediately cease to be a member of the
EU … The terms of the UK’s exit will
need to be negotiated and some estimates suggest that
this could take up to two years, if not longer …
For now UK patent attorneys and registered trade mark
attorneys will still be able to perform the same work
they do now, and UK and overseas IP owners will not lose
any IP rights or any access to EU IP registration
EU trade marks and registered Community designs cover all 28
EU member states. Although there is no precedent, it is likely
that once the UK leaves the EU there will be some arrangement
to extend existing rights to the UK. However, the costs and
procedures for doing this will have to be worked out between
the UK government and Brussels. EUIPO and the UK IPO are likely
to provide details in due course.
After the date of withdrawal, new EUTM and RCD applications
are not expected to cover the UK. Applicants who want
protection in the UK will have to file national
There will need to be transitional arrangements for other
rights that are governed by EU regulations, such as
geographical indications and
supplementary protection certificates.
The latter is likely to be particularly important, given the
significance of the life sciences sector in the UK. SPCs are
governed at EU level by a Regulation, which will cease to have
effect when the UK leaves, even though they are administered by
the national patent office.
The country would therefore have to legislate to provide
SPCs. "The least disruptive option would be to re-enact the
wording of the Regulation," said Liz Cohen of Bristows. "On the
other hand, it may be an opportunity to have a debate and cure
some of the deficiencies in the Regulation."
|ITMA says don’t
|Extracts from a statement by
ITMA President Kate O’Rourke:
"ITMA will advocate for the transition of all EU-based
trade mark and design rights to UK-based protection to be
simple and cost effective. We will also be calling on the
UK Government to ensure that UK practitioners remain
entitled to represent clients before the EUIPO."
Will there be any impact on European
No, as the European Patent Organisation is a completely
separate system from the EU. Applicants for European patents
will continue to be able to designate the UK and UK patent
attorneys will still be able to act before the EPO, just as
their counterparts in countries such as Switzerland do.
However, many patent attorneys in the UK fear that being
outside the EU will make them less appealing to clients than
those in countries such as Germany.
What will be the impact on the UK
In the short term, the transitional arrangements and the
likely need to (re-)register trade marks and designs in the UK
might generate extra work.
But most practitioners fear that in the long term they will
lose out as they will no longer be able to handle EU trade mark
and design filing, opposition and litigation work.
Some UK-based practitioners have said they will seek to
qualify and/or move to other EU countries such as Ireland or
France so that they can continue to do EU work.
They can also clutch at the fact that the new
EU Trade Mark Regulation provides that representatives in
European Economic Area (EEA) member states can act before the
EUIPO. No one knows if the UK plans to join the EEA, but if it
does that might benefit trade mark attorneys.
Similarly, solicitors and barristers are likely to lose
EU-related transactional and litigation work, including
handling cases at the General Court and CJEU in Luxembourg.
Speaking of Luxembourg, the UK will lose its judges who sit
in the EU courts. It remains to be seen what will happen to UK
staff in other EU institutions, such as EUIPO in
Alicante. Some of them have worked there since the CTM was
launched in 1996.
What about the Unitary Patent and UPC?
|Statement by EPO President
|"The Office underlines that
the outcome of the referendum has no consequence on the
membership of the UK to the European Patent Organisation,
nor on the effect of the European Patents in the UK.
Concerning the Unitary Patent and the Unified Patent
Court, the Office expects that the UK and the
participating Member States will find a solution as soon
as possible which will allow a full implementation of
these so-long awaited achievements."
Good question. The intertwined Unitary Patent and UPC
are in the process of being implemented, and were expected to
come into force next year, but they will now at least be
delayed and may well be dead.
The system requires 13 ratifications by EU member states to
come into effect, including the three largest markets
– these are France, Germany and the UK. Germany and
the UK were expected to ratify this year (France has already
done so). However, it is highly unlikely the UK could remain
part of the system: the Unitary Patent is established by an EU
Regulation, so could not apply to a non-EU state. The UPC is
created by an international agreement, but within the framework
of EU law.
Some have suggested that, in the short term, the UK could
ratify the UPC to get the system up and running, with a view to
withdrawing once the UK leaves the EU in a few
years’ time. But there would surely be political
and practical difficulties to this.
In the UK’s absence, Italy takes its place as
the third required ratifying state. Some of the legal
arguments, including the possibility of the UK joining the UPC
post-Brexit, are discussed in an
article by Wouter Pors of Bird & Bird, published before
So it should only be a short delay
There is another problem: the UPC Agreement names London as
one of the locations of the central division, alongside Paris
and Munich. Though some have argued that London could still
fulfil this role even if the UK were not part of the UPC, this
seems unlikely. Instead, it is probable that the UPC will have
to be amended to replace London with another location such as
Milan or The Hague.
The problem is that if you open up the UPC Agreement, you
risk inviting further changes, which could substantially delay
or even kill the system.
Moreover, there is a practical question: would the Unitary
Patent and UPC system still be commercially attractive without
the UK? Many patent applicants say they only value protection
in a few countries, such as the UK, France and Germany. If they
have to file a Unitary Patent and separately a UK patent, they
might think the former is not worth it.
Would UK IP practitioners still be able to take part
in the Unitary Patent/UPC?
As mentioned above, European patent attorneys in the UK
could continue to prosecute patents at the EPO.
However if the UK is out, UK-qualified solicitors and
barristers would not be eligible to act in the UPC. Likewise UK
judges could not sit in the court.
Paradoxically, UK patent attorneys who have the necessary
litigation qualification would in principle be able to appear
before the court.
What about other IP laws?
There are many other EU directives that affect IP issues,
including copyright, biotechnology and enforcement. Legislative
discussions are also underway on trade secrets and the Digital
The existing directives are implemented in UK law, so it
would be up to Parliament to decide whether to change the law
post-Brexit. With many other priorities, it is unlikely there
would be major changes quickly.
A more interesting point is that UK judges would no longer
have to follow EU case law, which might allow them to make new
law on issues such as parallel imports, trade marks and
Are there any other implications of
Unlike England, the majority of voters in Scotland and
Northern Ireland were in favour of remaining in the EU. The
vote increases the likelihood of Scotland holding another
independence vote, and some have speculated there may be a two-
or three-way referendum in Northern Ireland and/or the Republic
London also voted overwhelmingly in favour of remaining,
leading some people to suggest the city could also break away.
But that is probably fanciful.
Finally, there is speculation that the Brexit vote has
emboldened anti-EU campaigners in other countries, which could
lead to referendums in other EU member states. Both France and
Germany have elections next year.
When will we know more?
Don’t hold your breath. The leaving process
will take a long time and there will be many things to discuss
– some say as many as 10,000 pieces of legislation. IP
is unlikely to be top of the list.
Read all our coverage at managingip.com/Brexit