Brexit: Patents Dos and Don'ts

Brexit: A few important Dos and Don’ts ahead of the UK’s exit from the EU

With ongoing uncertainty around the UK leaving the EU, here are a few important “Dos and Don’ts” with respect to Patents and Supplementary Protection Certificates (SPCs). The most important thing to remember is that Brexit will not affect Dehns’ ability to continue handling all of your patent needs as before, and that we are here to take care of your Intellectual Property, whatever the outcome.

  • DON’T worry about your patents!

    Your patents and applications will not be affected by Brexit, whether there is a deal or not.

    In particular, European applications/patents are unaffected.  The European Patent Convention (EPC) provides the legal framework for European patents and applications. This is an international treaty which is administered by the European Patent Office (EPO). Both the EPC and the EPO are completely independent of the EU. The EPC already has non-EU signatories and the UK will remain a contracting state of the EPC even after the UK leaves the EU. This means that the UK can still be designated and European patent attorneys based in the UK will continue to have the right to represent their clients before the EPO.

  • DO wait to see how the law develops for supplementary protection certificates (SPCs)!

    SPCs that are already granted are national rights and therefore if you already hold a granted UK SPC no action is needed and this right remains intact.

    Whether there is a deal or not, the UK will continue to apply an SPC system which essentially replicates the current arrangements under the EU regulation relating to the grant of SPCs.  However, there could be changes which will come into effect immediately if the UK leaves with no deal, or at the end of the transition period if the UK leaves with a deal.  For new SPC applications, proposed legislation will require a relevant marketing authorisation in the UK and the SPC term will be calculated taking into account the earliest authorisation in the UK or an EEA member state. 

  • DO check your agreements!

    If you are party to any agreements (e.g. distributor agreements, assignments, licences or consents) where the territorial scope, jurisdiction and/or governing law are defined by reference to the “European Union”, you need to think about whether these agreements need amending, or whether new agreements need to be drawn up, in order to ensure that they accurately reflect the original intention of the parties.

    IP rights that were exhausted both in the EU and in the UK before the end of the transition period shall remain exhausted both in the EU and in the UK following Brexit, whether or not there is a deal.  This means that where an IP rights owner had, prior to Brexit, lost its right to control the distribution and resale of its goods that had already been placed on the market within the EEA by the rights holder or with the rights holder’s consent, the UK will continue to recognise the exhaustion of that right.

  • DO contact us if you have any questions or concerns regarding your patents!

    We are fully up-to-date with the current guidance from the EPO, the UK IPO and the relevant professional bodies.  We will continue to monitor for any further developments and issue further guidance as/when necessary.  We also suggest that you keep a close eye on our website and twitter feed!