This week, the UK Government released multiple technical notes detailing the intellectual property implications of a no-deal Brexit for exhaustion of rights, patents, trademarks and designs, and copyright. A few months ago, the idea of a no-deal Brexit was only entertained as a highly unlikely, ‘worst-case scenario’. This series of notes provides an update on the government’s plan in light of a hard Brexit.
The Withdrawal Act 2018 intends for current EU patent legislation to be retained in UK law. Importantly, the EU’s legislation on supplementary protection certificates (SPCs) will be kept in UK law and “this law, along with existing supporting provisions in UK patents legislation, will form the UK’s own supplementary protection regime on exit”. Likewise, all other EU legislation relevant to patents and supplementary protection certificates will be kept in UK law.
The UK’s membership of the European Patent Convention is not impacted by Brexit the current European patent system) will remain in place and continue to operate independently from the EU regime”.
The notice confirms that in the event of a hard Brexit:
- Any existing rights and licences in force in the UK will remain in force after March 2019 and no action is required from patentees or licensees.
- The SPC regime in the UK will continue to operate as before for UK, EU and third country businesses.
- Pending applications for patents and for SPCs will continue to be assessed on the same basis, and new applications can continue to be filed. If legal proceedings involving these rights or licences are underway, they will continue unaffected.
- The conditions for patenting biotechnological inventions will remain in place. UK, EU and third country businesses as UK patent holders, third parties and applicants can continue to make decisions on the basis of the current legislation. Patent examiners will continue to apply the same law when scrutinising patent applications in this area. Third parties who wish to challenge the validity of a patent will be able to do so on the same grounds as at present.
- For compulsory licensing, UK, EU or third country businesses as holders of UK patents or plant variety rights will continue to be able to apply for a compulsory licence, where there is an overlap between the rights.
- UK, EU and third country businesses will continue to be able to obtain a compulsory licence for manufacturing a patented medicine to meet a specific health need in a developing country.
- For pharmaceutical product testing, UK, EU or third country businesses can continue to rely on the exceptions from patent infringement provided for various studies, trials and tests carried out on a pharmaceutical product.
- There will be no immediate changes to the UK address for service rules which currently allow an address for service within the EEA when making a UK patent application.
- Legal professional privilege will continue to apply to both UK registered patent attorneys and those not based in the UK but on the 'list of representatives' for the EPO.