Effects of Brexit on Patents

Posted Friday, June 24, 2016.

Yesterday’s vote by citizens of the UK to leave the EU took many by surprise. A two-year period now begins for negotiating the implementation details of the breakup. Those seeking to protect intellectual property in the United Kingdom may wonder what the effects of the Brexit vote will be.

The UK has its own Intellectual Property Office (the UKIPO), and the European Patent Office (EPO) offers unified patent examination for its member nations, including the UK. Up to this point, US applicants seeking patent protection in the United Kingdom have had two courses open to them. The options included filing directly with the UKIPO to obtain a UK patent, or filing with the EPO and having that application nationalized by the UKIPO to receive the UK patent once the EPO examination is successfully completed.

Patents examined by the EPO and subsequently nationalized by the UKIPO remain in effect. Going forward, filing directly in the UKIPO and receiving a UK patent remains an option.

What has yet to shake out is what will happen with the European unified patent that has been planned. A streamlining of the patent process in Europe was on the drawing board, in which the EPO would issue a single patent valid in each member nation of the EU without requiring the applicant to nationalize the patent in each jurisdiction as is now required. Additionally, a European Unified Patent Court was planned, providing a single forum where European patents could be litigated rather than a patentee having to individually navigate the court system in each EU state to legally assert a patent.

The design and planning for the European unified patent and patent court had been ongoing for many years, but the entire system is now in flux. This is because the final implementation was predicated on each of the three largest EU member nations –Germany, the UK and France – ratifying the system, which had not yet taken place. That ratification requirement was in addition to the ratification required by the majority of EU states, of which ten have occurred to date.

With Brexit now set to occur, it remains to be seen whether the European unified patent will proceed. Even if it does go forward, without the coverage in the UK that would have been provided by a European patent previous to Brexit, such a patent would have less value. Further, the European Patent Court will not be able to be located in the UK with its experienced and familiar common law court system.

What we know now is that future patent applicants who need patent protection in the UK and in other EU jurisdictions will likely lose the existing benefit of unified patent examination by the EPO, in addition to the future benefits that the upcoming European unitary patent system would have provided. Barring anything unforeseen (a separate treaty between the UK and the EU relating to patents that is negotiated during the two-year breakup period, for example), to receive patent rights across Europe in the future, a patent applicant will need filings in both the UKIPO and the EPO.

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