“Brexit means Brexit” Olivia Murphy Chartered & European Patent Attorney Haseltine Lake LLP
Latest News • Brexit Day: 29 March 2019 • Draft agreement published reflecting state of negotiations between UK and EU on transitional arrangements - https://ec.europa.eu/commission/sites/beta- political/files/draft_agreement_coloured.pdf • Transition period ends: 31 December 2020 • Draft agreement largely provides for continuity but incorporates important provisions regarding IP (Article 50-57)
Patents • Current European patent system not affected by Brexit (because EPC not part of European Union) • Therefore, patents not covered by draft transition agreement • EPs will continue to be capable of validation in the UK before and after Brexit day • Status of UPC/UP unclear; the UK has now ratified (as of 26 April 2018), but Germany has challenges on constitutional grounds
EU Trade Marks and Registered Community Designs • Main focus of concerns regarding Brexit • Draft transition agreement provides: – The holder of any of the following intellectual property rights which have been registered or granted before the end of the transition period shall, without any re- examination, become the holder of a comparable registered and enforceable intellectual property right in the United Kingdom, as provided for by the law of the United Kingdom : • The holder of an EU trade mark shall become the holder of a UK trade mark, consisting of the same sign, for the same goods or services; • The holder of an RCD shall become the holder of a UK design registration for the same design; • The holder of a Community plant variety shall become the holder of an equivalent UK right.
File Trade Marks and Designs separately in UK? • Continuity of protection of EUTM/ RCDs registered at end of transition period seems close to certain • After transition period it will be necessary to file separately • Present circumstances that may warrant separate national filing - Known litigation risk - Business focus on the UK • Ongoing political uncertainty, legislation still needed in UK, logistical challenges • Third party monitoring of UK register likely to intensify
Unitary Patent Unified Patent Court
Existing European patent system • Single European patent application • Central application procedure at the EPO • Central (EPO) opposition procedure within nine months of grant • Central limitation BUT • Validated after grant as separate national patents • Infringement dealt with by national courts • Revocation must be sought at national courts
Problems with the existing system • National validations – can be expensive – depends on countries (e.g. London Agreement) • Multi-country infringement/revocation proceedings – expensive – different court procedures – different languages – different courts reach different verdicts (e.g. patent valid and infringed in Germany, invalid in the UK)
Unitary patent system • A single EU patent – Covering 26 member states participating in the scheme • A single EU court to decide: – infringement – validity – injunctions • Decisions binding across the EU
Unitary patent (UP) procedure • Administered by the EPO with the same procedure up to grant • Positive selection of a UP required at grant stage • Applies to patents pending when UP enters into force • EPO opposition possible • Post-grant renewal fees paid to EPO • Transitional provisions – if prosecuted in FR or DE, translate into EN – if prosecuted in EN, translate into any official EU language
Non-unitary patent (“classical validation”) • Can still choose non-unitary patent instead • Normal validation procedure • May also choose non-unitary patent in addition for: – EU states not participating – Spain – non-EU EPC member/extension states – e.g. Norway/Switzerland • Other non-EU countries could join the UP if they join the EU
Unified Patent Court • Decisions of the new court effective across participating EU states: – revocation – infringement – declaration of non-infringement (DNI) – injunctions, including pre-trial • other remedies include damages • losing party pays reasonable costs
UPC – First Instance • Central Division – London – chemistry, pharma, biotech, medical devices – Munich – mechanical engineering – Paris (HQ) – all others including electronics
UPC – EP transitional provisions • UPC will have exclusive jurisdiction over both – Unitary patents (UP) – European patents (EP) • opt-out from UPC for patentee of an EP (but not UP): – seven year opt-out period – litigation before national court – opt out applies for whole patent term – Can opt back into UPC – Fee of 80 Euros for each direction • Must opt-out before any third party UPC action (revocation or DNI)
Key considerations for next few years • Choose EP or National Route – Decision to be made at PCT National Phase Entry • If EP Route – Choose Unitary Patent or ‘classical’ EP patent? • Decision to be made shortly before grant (Translation within 1 month!) – If ‘classical’ - choose to Opt out of Unitary Patent Court? • Decide after grant, but before 3 rd party UPC action • Existing Granted cases – Opt out?
Whether to request unitary patents? • Cost consideration important: – renewal fee likely to be equivalent to cost of existing renewals fees of Top-4 designated countries, i.e. DE, FR, GB, NL – that level is likely to put off many patentees. Most cases are only validated in a maximum of three countries. • EP classical validation likely to be more cost effective – also gives flexibility to prune portfolio and reduce costs • Consider separate National applications in DE and GB only?
Q&A Thank you for listening Any questions? Olivia Murphy: omurphy@haseltinelake.com
Contact • For more information, please contact: • Olivia Murphy, European Patent Attorney • Tel: 00 44 117 910 3200 • Email: omurphy@haseltinelake.com
THANK YOU ANY QUESTIONS?
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