Brexit: Patents

Brexit – a few key issues to note following the UK’s exit from the EU

With the UK having left the EU on 31 January 2020, here are a few issues to be aware of regarding Patents and Supplementary Protection Certificates (SPCs).

However, the most important thing to remember is that Brexit will not affect Dehns’ ability to continue handling your patent needs as before, and that we are here to take care of your Intellectual Property.

  • DON’T worry about your patents!

    Your patents and applications will not be affected by Brexit.

    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.

  • DON'T worry about your Supplementary Protection Certificates (SPCs)!

    •  There will be no change to SPC legislation in the UK until the end of the transition period (31 December 2020).  On 1 January 2021, new regulations will come into effect in the UK.  These will bring current EU legislation relating to SPCs into UK law as far as possible.

    •  If you already have a granted SPC no action is required.  It will remain in effect after 31 December 2020.

    •  If you have a pending SPC application no action is required.  It will continue to progress and will be examined under the current SPC framework.  Any SPC which is granted based on such an application will provide the same protection as existing SPCs.

    •  If you file an SPC application after 31 December 2020 you will need a relevant marketing authorisation which allows the product to be sold in the UK.  Authorisations from the European Medicines Agency will be converted into equivalent UK authorisations on 1 January 2021.

    •  SPC applications filed after the end of the transition period will get the same term of protection as if filed before.  This will still be calculated based on the first authorisation to place the product on the market in either the UK or the EEA.

  • 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.  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!