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Brexit – Impact on Utility Patents and Patent Applications

Client Alert

January 5, 2021

On December 31, 2020, the United Kingdom (UK) left the European Union (“EU”), commonly referred to as “Brexit.”  As was discussed in our previous Client Alerts, Brexit impacts your registered and pending trademarks and registered community designs (RCDs) by creating new corresponding rights in the UK.  This raises the question about utility patents granted or pending before the European Patent Office (EPO) and you may be curious about what actions need to be taken to protect your inventions. Fortunately, the answer is nothing – no further actions are needed to maintain your patent protection in the UK. 

Brexit has no impact on utility patents pending or granted by the EPO.  The reason is that Brexit relates to the UK leaving the EU, and the EPO is a separate organization from the EU government.  Trademarks and RCDs are administered by the European Union Intellectual Property Office (EUIPO) to provide unitary trademark and design rights across the EU.  Since the UK is now not part of the EU, provisions were made for providing corresponding rights in the UK after Brexit.

Unlike the EUIPO, the EPO was formed by a separate treaty by the Contracting States to the European Patent Convention.  There are currently 37 Contracting States to the EPO while the EU has 27 members; therefore, Brexit does not change how UK patents are prosecuted or obtained through the EPO.  Patent prosecution for inventions you want to protect in the UK will continue to be performed by EPO examiners and once the patent is granted, the patent may be validated in the UK in the same manner as the past.

There is still the potential for changes related to patents and patent infringement from the EU and we will be monitoring this closely. There is hope that sometime soon the EU will implement the Unitary Patent System.  The Unitary Patent System was ratified by the German legislature in December 2020, removing the last roadblock to implementation.  Once Germany’s President signs the law and deposits the ratification with the Europe Secretariat, this new EU-based system will allow for a Unified Patent Court and a European Unitary Patent. Under this system, patent applications that are granted by the EPO may be validated as a European Unitary Patent, providing protection in 24 participating member states of the EU (excluding Croatia, Poland, and Spain).  We will provide further guidance as the implementation dates nears.

Please note that each situation has its own unique circumstances and ramifications. This Client Alert is for informational purposes only and is not legal advice.