Brexit - what you need to do now.

The Brexit transition period ended on 31 December 2020, which means that since 01 January 2021, your EU unitary rights no longer take effect in the UK.

Your EU unitary rights now only take effect across the current 27 EU Member States. National UK rights continue to take effect in the UK as before.

EU Rights

For any of your EU unitary rights registered before 01 January 2021, you now also have a new comparable UK right that enjoys the same legal status as if you had applied for and registered the right under UK law. Your new comparable UK right inherits the same filing, priority, and seniority date, as applicable.

For any of your EU unitary rights still pending on 01 January 2021, you can apply to register the same right in the UK within a specific period after the end of the transition period and retain the same filing, priority, and seniority date, as applicable.

  • For UK trademarks, you can apply to register the same trademark as a UK trademark in respect of the same goods/services within 9 months after the end of the transition period, i.e. by 30 September 2021.
  • For UK designs, you can apply to register the same design as a UK design within 9 months after the end of the transition period, i.e. by 30 September 2021.
  • For UK plant variety rights, you can apply to register the same plant variety as a UK plant variety right within 6 months after the end of the transition period, i.e. by 30 June 2021.

In any case, your new UK right is independent of your EU right. The UK and EU rights can be renewed, challenged/cancelled, and transferred independently of each other.

For any new rights that you would like to register, you will now have to apply to cover the EU and the UK separately if you want to secure rights in both the EU and the UK.

EU jigsaw revealing UK piece missing

Patents

European Patents are granted by the EPO under the European Patent Convention, which is an autonomous legal system to the EU and so the grant procedure for European Patents remains unchanged. The grant of UK Patents remains the responsibility of the United Kingdom Intellectual Property Office, meaning the grant of UK Patents also remains unchanged. Any granted UK Patents or any European Patents validated in the UK continue to take effect in the UK as before.

However, you should consider that patent rights on patented goods placed on the market in the UK will not be exhausted in the EU, so a patent proprietor in the EU can prevent parallel import of the patented goods from the UK into the EU. You should therefore consider that you might not be able to export patented goods sourced in the UK to the EU, and you should check with the supplier of your goods whether those goods are the subject of a patent in the EU country to which you intend to export and if you have consent to export from the UK to the EU.

Representation

Solely UK-based representatives have lost their capacity to represent before the EUIPO and have been automatically removed from all files in EU-related proceedings and deleted from EUIPO’s database of representatives. You will therefore require an address for service in the EU/EEA for proceedings before the EUIPO. You will also now require an address for service in the UK, Gibraltar or the Channel Islands for any new UK rights. This includes European Patents validated in the UK.

 What you need to do now

Brexit has changed your EU intellectual property rights, and we haven't covered all aspects of the effect of Brexit on your rights here, but there are a few matters you need to do now:

  • Be aware of your new comparable UK right and make sure you have made provisions to renew the right separately from your EU right.
  • Remember to apply to register any pending EU unitary rights in the UK by 30 June 2021 for plant variety rights and by 30 September 2021 for trademarks and designs.
  • Consider that you will now have to apply to cover the EU and the UK separately in any new filing strategy.
  • Check with the supplier of any goods that are the subject of a patent in the EU country to which you intend to export that you have consent to export from the UK to the EU.
  • Make sure you have an address for service in the EU/EEA for your EU rights and an address for service in the UK, Gibraltar or the Channel Islands for any new UK rights.


We’ve made you Brexit-ready

If we are your representative for either EU or UK rights, you don't need to take any further action. We have already taken account of your new comparable UK right and made provisions to monitor the renewal of both your EU and UK rights (unless you have told us otherwise) and to remind you to register any pending EU unitary rights in the UK. We are also based in both the EU/EEA and the UK, so you don't need to find an alternative/additional address for service.

If you are unsure about the effect of Brexit on your EU or UK intellectual property rights, please contact us.

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