Watching the news over the last 3 years, hearing hundreds of politicians, economists and business owners talk about Brexit has left us scratching our heads from an IP perspective. You would have thought at some point IP would have been mentioned?
It’s true there are more pressing matters, but IP is only a step away from one of them: TRADE.
Generally speaking, IP rights (namely patents, trademarks and designs) encourage innovation, innovation leads to new products, new products lead to trade -so it’s a conversation worth having.
So, how will my IP be affected? As with all things related to Brexit… it depends. IP is a general term which refers to a collective of different rights; patents, trademarks, designs, copyright etc. These rights are territorial and only apply in the jurisdictions that they were registered in and must be considered separately with Brexit in mind.
Are my patents going to be affected?
The good news is that the European patent system is governed by the European Patent Convention, not the EU. This means that, for patents, there’s no change to the way your patents are filed and prosecuted, and they will not be affected. Furthermore, the UK will also remain a member of the Paris Convention, which covers the intellectual property protection around the world, so you will still be able to subsequently claim priority when filing a patent application within a year in other countries, and vice versa.
What about my trademarks?
This depends on the status of your trademark. Those who hold a registered EUTM will be granted comparable rights in the UK automatically. These marks will be known as “comparable trademark (EU)” rights and will share the same filing and registration dates of the EUTM. There is no fee to obtain the comparable mark itself, however once this has been created you will have to pay renewal fees in order to keep it active. If you don’t want this equivalent right, you will have to opt out ahead of “Brexit day”.
Unfortunately, any EUTM applications that are pending on or after “Brexit day” will not automatically result in a comparable right being created. Instead, you will have to file a comparable right within 9 months from “Brexit day”. Trademark owners will follow the normal application process for this and will therefore have to pay the standard official fees (and attorney fees). If you file your comparable right with the UKIPO within this 9-month period, it will share the same filing and priority dates of the pending EUTM.
And my registered designs?
Similar to trademarks, the draft legislation indicates that equivalent design rights will be created for those with registered community designs. These comparable rights will also share the same filing and registration dates. Again, there is no cost associated with the creation of these comparable rights but there are costs moving forward (renewing the design with the UKIPO).
Following the trademark approach to applications still pending on or after “Brexit day”, any registered designs not yet granted will have to be refiled with the UKIPO and the standard official fees will be payable. Comparable design rights come with a 9-month deadline (from “Brexit day”) in which you can file and benefit from the same filing date and priority date as the registered community design.