With the UK on course to leave the EU, this Briefing Note
discusses the impact that this will have on European patents and on
the launch of the Unitary Patent (UP) and the Unified Patent Court
There is no impact on the grant of European Patents
The European Patent Convention is an international (not
European) treaty; therefore BREXIT will have no impact on the grant
European patents (EPs) and the validation of EPs in the UK.
Patentees will still be able to obtain patent protection for the UK
through the European Patent Office (EPO), which is not an EU
institution, in exactly the same way as they do today. UK-based
European Patent Attorneys will continue to be able to file,
prosecute, validate and oppose EPs for clients before the EPO
covering all designations as is the current practice.
What will happen with the UPC and UPs?
The future of the UPC is uncertain and its launch will certainly
be delayed, probably by some years, by the UK withdrawal from the
EU. The UK has not triggered "Article 50" which formally
signals its intention to start the 2-year period of negotiation to
withdraw from the EU. At present there is no clarity on when this
might happen and until the end of that period, the UK remains a
member of the EU.
If, after a re-negotiation, the UP system comes into force then
because the UK will not be part of the EU a UP will not extend to
the UK and the UPC's jurisdiction will not cover to the UK.
However, UK-based European Patent Attorneys will be able to
validate the UP designation and represent clients before the UPC
Courts. As most patentees consider the UK an integral part of their
European patenting strategy (50% of EPs are only validated in the
UK, Germany and France1) applicants will continue to
want UK patent protection. As is the case now, to obtain patent
protection in the UK from a granted European patent application,
patentees will be able to validate separately for the
The UK's process of ratification for the UPC had started but
it is unlikely that there will be a political will to finish this
process. The UPC can only come into effect when ratified by 13
participating countries which must include the three EU Member
States in which the most EPs had effect in 2012 (the year before
the Agreement was signed (Article 89)). Once the UK leaves the EU,
the three EU countries required to ratify will be Germany, France
and Italy. By June 2016, a total of 10 Member States had ratified
the UPC Agreement: Austria, Belgium, Bulgaria Denmark, Finland,
France, Luxembourg, Malta, Portugal and Sweden.3 Italy,
Lithuania and Germany are moving through the legislative process to
ratify the UPC Agreement although it is not clear if the
legislation in these countries will now be put on hold.
It is expected that the participating EU Member States will
re-locate the London section of the UPC's Central Division to a
country within the EU. The potential contenders for the Court's
new location are Milan and The Hague. However, to do this will
require the re-opening of at least Article 7(2) of the UPC
Agreement. There has been some concern that amendment to the UPC
Agreement would potentially open up renegotiation on other points,
which could lead to even further delays or the entire breakdown of
1.Table 2 of Commission Staff Working Paper SEC(2011) 482
final "Impact Assessment – implementing enhanced
cooperation in the area of the creation of unitary patent
2. Alternatively, patentees could also follow the
national GB designation route at the UK IPO.
The focus on the product being obvious or anticipated as at a certain date provides powerful protection and commercial certainty without conflicting with a patentee's ability to obtain patent protection.
The High Court considered a claim by Azumi, the owner of high-end Japanese restaurant Zuma against Zuma's Choice Pet Products Limited (ZCPP) and its director Zoe Vanderbilt for trade mark infringement.
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