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IP & Brexit - what changes, what does not?

25.01.2019
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January 25th, 2019

In March, 2019, at least according to Prime Minister May, Brexit will be in full swing, which also affects the IP and patent field. Kolster’s European Patent Attorney Marjut Honkasalo clarifies what is about the change and what will remain as is.

This will not change: conventional European patents

Whichever way the separation of Great Britain and EU happens, certain things will remain unchanged. For example, Brexit does not in any way affect European patents granted through the EPO process, in other words, the current country-specific validations.

“EPO is not an organisation under the EU, so there will be no changes to the current practices, whether there is going to be a deal or not. The patent application process and opposition proceedings remain unchanged. In addition, European Patent Attorneys in Great Britain can also in the future represent applicants at the EPO,” says Kolster’s European Patent Attorney, Marjut Honkasalo.

So, companies need not change their application processes. New applications can be made, and patent applications that are pending are evaluated on the same grounds as now.

“Most of the British patent legislation will continue, for the most part, to follow the current EU legislation, according to a statement by the UK IP office. This concerns the supplementary protection certificates for medicines, for example. It can be said that in the European patent field it is business is as usual,” says Honkasalo.

This will change: unitary patent package

There have been attempts in the EU area for long to introduce the unitary patent as an alternative to country-specific validations. A part of the package is the Uniform Patent Court, where the purpose is to solve disputes concerning unitary patents and country-specific European patent validations of the EU countries that have ratified the agreement on the Unified Patent Court.

When the package is effective, the holder of a European patent can choose whether to validate the patent as a country-specific European patent or as a unitary patent covering the EU countries that are both participating to the unitary patent and ratified the agreement on the Unified Patent Court. In addition, the holder is able to choose whether to have country-specific protection in the European patent member countries outside the unitary patent area. However, the start of the package is still waiting for a decision by the German Constitutional Court.

“Because a unitary patent confers patent rights in EU member states, only, it is my view that after Brexit, Great Britain cannot be part of the area covered by the unitary patent. From the viewpoint of companies, this means that protection in Great Britain need to be obtained by the conventional country-specific European patent validations. This may have a negative effect on the attractiveness of the unitary patent.

Staying outside the unitary patent package, may weaken the global competitive position of IP companies, in particular, placed in Great Britain. In addition, staying outside the unitary patent package means that the Unified Patent Court will no longer have the input of British judges, and British lawyers cannot represent their customer at the Court, but British European Patent Attorneys who have the required additional qualifications can. Great Britain has in fact expressed its desire to be included in the package, both in the unitary patent and the Unified Patent Court, after Brexit.

“I assume that the politicians will find a way to have Great Britain part of the Unified Patent Court. The agreement on the Unified Patent Court was drafted, as concerns its basic principle, to be country-neutral, for example, in the requirements of coming into force, countries are not named. The last dispute relating to the working out of the agreement, concerning the location of the Central division, was however solved by referring to localities in the agreement: the central division of the Unified Patent Court was decided to be divided into three places, one of which is London. If London stays in the agreement, and Great Britain would not be part of the Unified Patent Court Agreement, one of the Central divisions of the Unified Patent Court would be in a country where European patent disputes concerning its area could not be solved by the Court”, says Honkasalo

According to Honkasalo, it is possible that the other countries cannot accept that one part of the Central division is in a country which the decisions do not cover and which does not take part in the costs. If, on the other hand, London is deleted from the agreement, it may be necessary to ratify the agreement anew.

This will change partly: diversification from EU legislation

Diversifying from the EU both blocks Great Britain outside of the European legal systems and provides the country with the conscious opportunity to diverse from the European legislation. In practice, this is seen, for example, in whether the same things are accepted to be patented elsewhere in Europe and Great Britain.

“After Brexit, even if the EPO granted a patent, the Court of Great Britain might not consider the invention defining a solution which could be a patentable solution,” says Honkasalo.

Diversifying also affect the exhaustion, that is, expiry, of rights. Resale or transfer of a product protected in EU by a patent, for example, within the EU area cannot be prohibited.

“Great Britain has expressed that it has the intention to respect the principle of the exhaustion of rights as if it were part of the EU area, so in the future, too, a product legally obtained in the EU area can be transferred to Great Britain. However, it is uncertain whether the EU will accept the operation in the other direction, too,” says Honkasalo.

Most of the patent legislation in the Great Britain is even now its own legislation and the EU has only provided a few additional sections that the British intend to keep even in case of hard Brexit. So, for the time being, Great Britain largely follows the European policies in patent matters, such as supplementary protection certificates and patentability of medicines. It has also been stated that the biotechnology directive will be complied with in the future as until now.

This we do not yet know

According to Honkasalo, Brexit may cause peculiar twists in the IP sector. One example is immigrating and emigrating. After the secession, British European Patent Attorneys can do business in any EPC member state. But if no agreement is reached and the so-called hard Brexit is realised, British European Patent Attorneys or their families cannot necessarily any more live in a EU member state.

“Offices and companies located in Great Britain may also move their IP departments elsewhere in Europe after Brexit. From their point of view this is obviously unfortunate, but the EU area wins when patent work and, if possible, skilful workforce moves elsewhere in Europe,” says Honkasalo.

The government of Great Britain has repeatedly expressed its wish for smooth cooperation with the EU, in the unitary patent packet in particular. Companies are assured of the fact the immaterial rights are protected in Great Britain also after Brexit, and patent matters can still be handled with the EPO.

“However, the future is open. We can only guess what will happen in practice,” Honkasalo sums up.

Contact us

Marjut Honkasalo
+358 50 5242413
marjut.honkasalo@kolster.fi