UK: Patent Planning For A "No Deal" Brexit

Last Updated: 28 September 2018
Article by Mark Bell

The government has recently issued a notice outlining the effect on the UK patent system were the UK to leave the EU without an agreement (a "no deal" scenario) in March 2019.

While the notice reassures that such a scenario remains unlikely, it sets out three areas relating to the patent system that would be affected, were this to happen:

  • supplementary protection certificates
  • the Unified Patent Court and the unitary patent
  • correspondence addresses and confidentiality for UK patents

In the most part, there are few changes that will affect businesses (both those in the UK and those holding UK rights). However, patent owners (both in the UK and overseas) should take note of the changes that may be envisaged and plan accordingly. Dehns  is able to advise as to what actions may be taken to minimise the impact of a no deal scenario on your UK and European patents.

Supplementary protection certificates

Supplementary protection certificates provide an additional period of protection in the UK (under EU law) after a UK patent has expired for patented pharmaceutical products and agrochemicals. Under a no deal scenario, all the relevant EU legislation (or its UK implementation) will be retained. The existing systems will therefore remain in place.

This means that any existing rights and licences in force in the UK will continue after March 2019, pending SPC applications for UK protection will be assessed on the same basis as before and any legal proceedings will continue unaffected.

EU law also sets out provisions concerning exceptions from patentability for biotechnology inventions and the scope of protection that is able to be obtained in the UK. There are also provisions in EU law for compulsory licences to be granted for the manufacture of a patented medicine in the UK, if it is for export to a country with a public health need for this medicine. Some studies, trials and tests using a patented pharmaceutical product in the UK are also exempt from patent infringement under EU law. 

The UK implementation of these laws will remain in place after the UK leaves the EU, even in the event of a no deal scenario, so for UK, EU and third country businesses there will be no significant change to these UK systems and processes.

Unitary patent and the Unified Patent Court

Although the unitary patent and the Unified Patent Court have yet to come into force, its subsequent fate may well be affected by the UK leaving the EU.

Were the Unified Patent Court to never come into force, there will be no change for businesses in the UK or the EU at the point that the UK leaves the EU, even though the UK has ratified the Unified Patent Court Agreement.

Were the Unified Patent Court to come into force (once Germany has ratified the Unified Patent Court Agreement), the UK will seek to remain within the Unified Patent Court and the unitary patent system. However, depending on whether this takes place before the UK leaves the EU (the latest thinking  on this is that this seems unlikely) or after leaving the EU, may affect the UK's ability to participate in these systems. 

Were the UK to be part of the unitary patent and the Unified Patent Court systems (e.g. before the UK leaves the EU), one scenario is that the UK would need to withdraw from them (e.g. when the UK leaves the EU). Businesses (both in the UK and overseas) would therefore no longer be able to use the unitary patent and the Unified Patent Court to protect their inventions within the UK. Instead, as they are able to now, they are able to seek patent protection in the UK via the UK Intellectual Property Office or the European Patent Office (a non-EU institution).

However, the government's briefing notice suggests that any existing unitary patents (e.g. granted before the UK leaves the EU) would give rise to equivalent patent protection in the UK (e.g. after the UK leaves the EU). Furthermore, UK businesses would still be able to use the unitary patent and the Unified Patent Court to protect their inventions within the remaining EU countries that are contracted to the Unified Patent Court Agreement (this quickly becomes very complex, so please see the area of our website dedicated to the UPC that will answer all your questions).

There are many unknowns here and the simplest advice may be to "watch this space" and to check back for more up to date advice were the unitary patent and the Unified Patent Court to come into effect, as some actions may then be necessary. If you are particularly interested in the various ways in which the unitary patent and the Unified Patent Court systems could develop, please contact Dehns to discuss this further.

Correspondence addresses and confidentiality for UK patents

The government's briefing notice explains the requirements for businesses (both in the UK and overseas) that are applying for a UK patent to have a UK or EEA address for service. The notice also outlines the way in which legal professional privilege is given to communications between UK registered patent attorneys and their clients (or other intellectual property representatives). None of this is affected by the UK leaving the EU (because these matters are not determined by EU law or the UK's membership of the EU), so it's very much business as usual!

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