On 31 December 2020, the Brexit transition period comes to an end and significant changes to the law in the UK will take effect.
For patents and the law in relation to patents, there are some important soundbites for businesses to be aware of – some of which you may already have heard about, while others may be news outside the UK (even for experienced patent lawyers).
- For the obtaining and maintaining of
patents, there will be little change. This is because:
- The UK national patent system is (and always has been) governed by national and international law, not EU law; and
- The European patent system, pursuant
to which a patent covering the UK may be obtained (as a UK
'designation' of a European patent e.g. EP(UK) xxxxxxx), is
also governed by national and international law, not EU law. (This
is why the European patent system has always had non-EU members,
such as Switzerland, Norway and Turkey)
- There will be no change to the
office(s) overseeing the grant of such patents and to which
maintenance fees need to be paid.
- However, the UK's address for
service rules in respect of patents are changing. From 1 January
2021, the rules will not permit the provision of an address for
service outside the UK, the Channel Islands or Gibraltar in respect
of a UK patent (GB or EP(UK)) or an application in the UK IPO. An
address for service in the remaining EU or EEA will no longer be
permitted. New patent applications filed in the UK IPO from 1
January 2020 will need to comply with the new regime. There will be
transitional provisions for applications and proceedings that
remain pending on 1 January 2021.
- UK patent attorneys',
solicitors' and barristers' entitlement to represent their
clients before/in proceedings in the EPO and the UK IPO will
- Disputes as to infringement and
validity of granted patents covering the UK (national and EP(UK))
are, and will remain, matters for the courts of the UK. (The
EPO's remit to hear post-grant oppositions filed within the
first nine months of a European patent designating the UK will
- There will be no change to the rules
as to standing to sue and the establishment of the tort of patent
infringement in the UK. For example, quia timet
infringement actions will continue to be available upon
consideration of the same legal principles, and so it will remain
possible to bring a non-strikeable claim for infringement
before a relevant marketing authorisation has been
granted where the principles reiterated in Teva v Chiesi
 EWHC 1311 (Pat) are satisfied.
- There will be no change to the
availability of remedies from the courts in the UK in patent
litigation. In particular:
- Injunctive relief to restrain infringement of a patent in the UK will continue to be available upon consideration of the same legal principles. For example, in standards essential patent disputes, FRAND injunctions will continue to be available further to the UK Supreme Court's judgment in Unwired Planet v Huawei  UKSC 37;
- Declarations of non-infringement will continue to be available upon consideration of the same substantive legal principles. Where jurisdictional tests are satisfied (which include tests under English common law principles that will continue unchanged), such declaratory relief may include non-UK patents - this occurred, for example, in Actavis v Eli Lilly ( EWCA Civ 517;  UKSC 48).
- Arrow declarations - a
declaration that the applicant party's own product or process,
or aspects of it, were known or obvious at a relevant date - will
continue to be available upon consideration of the same legal
principles. Such relief does not necessarily require the existence
of a patent or application covering the UK. Arrow relief
was awarded by the Patents Court in Fujifilm v AbbVie
 EWHC 2748 (Pat) and GSK v Vectrura  EWHC 3414
- As a signatory to the Hague
Convention on Choice of Court Agreements, the UK courts will
continue to recognise and give effect to exclusive jurisdiction
clauses, including those conferring jurisdiction on the courts in
the UK in respect of licences of patents beyond the UK - and so in
such contexts to consider questions of infringement of non-UK
patents - as exemplified by judgments in Chugai v UCB
( EWHC 1216 (Pat),  EWHC 2264) and Celltech v
Medimmune ( EWHC 1522;  EWCA Civ 1331).
- Unless agreement is reached to
replace (in respect of the UK) the "Brussels" and
"Lugano" regimes on jurisdiction and enforcement of
judgments in the EU and the EEA, in the UK the common law will
govern such issues. The common law already governs such issues as
between the courts in the UK and the courts in the US and Canada.
The Brexit transition presents some opportunities for well-informed
- The UK will not be participating in the new Unified Patents Court and Unitary Patents system, if and when it becomes operational in some European countries. The existing systems in the UK noted above therefore will not be affected by the introduction of the new system, and the jurisdictional challenges presented by it.
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The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.