Brexit Impact on Intellectual Property Rights to Be Known Only After UK Exit Terms Finalized

Although the United Kingdom (UK) vote to leave the European Union (EU) will ultimately impact intellectual property (IP) rights in both territories, the UK remains a member of the EU until the exit terms are formalized, so there is no immediate impact and will likely be none for several years. The Treaty on European Union, Article 50, provides for a minimum of two years to formalize the UK's exit from the EU.

Potential Future Brexit Impact on Trademarks and Designs

Once the exit terms are finalized, the transitional IP terms will likely include mechanisms for the conversion of EU rights to UK rights, such as conversion to national applications or perhaps enactment of legislation extending European Union Trademarks (EUTM) and European Community Designs to the UK. These mechanisms will likely come at a cost, including additional filing fee requirements for conversion, and also create certain risks, including opposition or challenge against attempts to extend rights to the UK by existing UK registrants and establishing genuine use of the marks in the UK and the EU to maintain and renew registrations in each.

Potential Future Brexit Impact on Patents

The European Patent Convention is independent of the European Union, so the UK's position in the European patent system is not affected by Brexit. An inventor will still be able to designate the UK and seek protection in the UK by filing a European patent application. The same will not be true for the Unified Patent System, which was on course to take effect about May 2017. The UK's exit will delay implementation of the system, maybe for several years. As with trademarks and designs, a unitary patent will likely not extend to the UK. A separate European patent or a UK national patent will be required.

Considerations Now

Although too early to understand the full impact of Brexit on intellectual property, it is not too early to identify the intellectual property and rights that will likely be affected and take steps to ensure maximum protection going forward. For example, do you have plans to expand into the UK using your EUTM? Can you establish genuine use for possible conversion? Do you have licenses or other agreements that cover the EU or specific EU laws? If so, do these agreements need to be amended to reference the UK or UK-specific laws? Consideration of these and similar issues now will ensure that you are in a strong position when the UK ultimately leaves the EU.

Holland & Knight's Intellectual Property Group will keep you posted as new developments arise. Please contact us for further information or to discuss specific intellectual property matters that may be affected by Brexit.

Information contained in this alert is for the general education and knowledge of our readers. It is not designed to be, and should not be used as, the sole source of information when analyzing and resolving a legal problem. Moreover, the laws of each jurisdiction are different and are constantly changing. If you have specific questions regarding a particular fact situation, we urge you to consult competent legal counsel.