Introduction

In these difficult and unprecedented times, we take this opportunity to send our best wishes to all of our clients and colleagues working in or using the European and UK patent systems. Whilst appreciating that in view of COVID-19 unparalleled actions are being taken in many countries, at some point life has to return to something resembling “normality”, even though there will inevitably be changes. For those seeking patent protection in Europe and/or the UK, there are however some clear points which can be set out now which you should bear in mind, with Brexit making very little difference on the ground to most cases. The purpose of this note is to give you some important points to bear in mind at an outline level.

As you will be aware, the United Kingdom formally left the European Union on 31 January 2020. The Withdrawal Agreement incorporates an 11-month Transition Period up to 31 December 2020 for the negotiation of a “deal” going forward. During this Transition Period, trade between the UK and the EU will continue as before as though there has been no change. Commentators generally agree that the negotiation of a full agreement between the UK and the EU by the end of 2020 will require considerable effort, and may prove not to be possible, given the immense complexity. Of course, the extraordinary circumstances, both human and economic, created by COVID-19 could hardly have come at a worse time for this.

These comments therefore focus on what can currently be said regarding some patent-related issues of which our clients should be aware for both the UK and Europe.

We are only too well aware that some false publicity exists that suggests European Patent Attorneys in the UK will not be effective because of Brexit (call it “fake news” if you will). We therefore want to stress that this is not correct, repeat not correct, and we ask our clients to take careful note of the following.

European Patents

Importantly, European patents applied for and granted under the European Patent Convention (EPC) through the European Patent Office (EPO) are not part of an EU-related system. The EPC is not and never has been an EU treaty (e.g. Switzerland has been a member since the start and is not an EU country).

There will therefore be no change in relation to European patents obtained under the EPC from the EPO. This is true both up to the end of the Transition Period and beyond. Moreover, even if the UK and the EU fail to reach a deal, this will not affect the ongoing status of the UK as a member state of the EPC. Consequently, the United Kingdom and the expertise of UK European Patent Attorneys will still be fully available to clients seeking representation in Europe under the EPC and before the EPO. This means that UK patents and European patents will still be available as before. In addition, European Patent Attorneys based in the UK will, of course, still be able to handle for clients any procedures dealt with under the EPC, including, of course, oppositions.

In addition to the above, you should be aware that the London Agreement relating to translations that need to be filed as part of validation of European patents in EPC countries is also completely unaffected by Brexit, and hence European Patent Attorneys in the UK will continue to be able to take advantage of the opportunity to save translation costs provided by the London Agreement just like all other European Patent Attorneys.

Supplementary Protection Certificates (SPCs)

Under both UK domestic law and the EPC, the maximum term of a patent is in almost all cases 20 years from the filing date. As our clients will therefore be aware, SPCs can be extraordinarily valuable patent properties for pharmaceutical and other medicinal product clients, where it is often the case that the current patent term of 20 years from filing is inadequate to provide appropriate renumeration for pharmaceutical and medicinal product patents. Depending on the date of the first marketing authorization for a protected drug, an SPC can add up to 5 years of additional protection for the product, and, in some cases, there is even a further 6-month “extension” available for pediatric-approved products. This is also an appropriate point for the sake of completeness to remind you that SPCs are available for agricultural products, e.g. herbicides and like chemicals, in a manner which parallels the provisions for pharmaceuticals and medicinal products.

Although SPCs are granted by each individual country, the granting of SPCs through the individual Patent Offices country by country takes place in accordance with EU Regulation No. 469/2009. The corresponding EU Regulation for plant products such as agrichemicals is EU Regulation No.1610/96. Currently, disputes regarding SPCs technically carry with them the ultimate possibility of a referral to the Court of Justice of the European Union (CJEU). However, for political reasons during the campaign leading up to Brexit by the UK, it has been apparent that successive governments have not seen a role for the CJEU. The present government in the UK has a substantial majority in parliament and has made it clear that as part of the process of “taking control” of our laws, the CJEU will not have any role in legal matters going forward for the UK. It seems very unlikely that this situation will change during the Transition Period.

SPCs which already exist in the UK and which have been applied for up to the end of the Transition Period will not be affected, subject to one caveat (see below). However, if there is no future agreement between the UK and the EU at the end of the Transition Period, SPC applications in the UK after the end of 2020 will be dealt with by the UK domestic law. Our understanding is that the EU Regulation will in effect be copied into UK domestic law at the end of the Transition Period with amendments to the language to replace references to EU organizations and Directives/Regulations with UK equivalents. Thus, for UK SPCs going forward after the Transition Period, the resolution of disputes will ultimately go to the UK Supreme Court rather than the CJEU. It is also, however, worth mentioning that the UKIPO takes a view that existing SPC case law promulgated by the CJEU is expected to be followed in time to come, even though the CJEU will no longer be the supreme tribunal for UK SPCs. Of course, as we go further into the future there is naturally the possibility of divergence on case law between the UK Supreme Court and the CJEU.

The EU Regulation No. 469/2009 puts great importance on the first marketing authorization for a drug effective within the EU. This marketing authorization and its date of issue determines the duration of an SPC up to a maximum of 5 years. Our understanding is that after the end of the Transition Period, any EU marketing authorizations which already exist will be de facto converted into UK marketing authorizations, but if at the end of the Transition Period the relevant EU marketing authorization still has a pending status, this will need to be resubmitted to the UK Medicines Agency.

The Unified Patent Court (UPC) and the Unitary Patent

As you will be aware, some time ago with much controversy EU countries set up a treaty to allow for the issue of unitary patents which are essentially a  single pan-European patent right covering all member states to that treaty. It was also established that there would be a UPC, to hear patent disputes, with its primary bases being split according to subject matter between court locations in London, Paris and Munich. Fairly recently, the UK government has indicated that it will not proceed with becoming a member state of any unified patent treaty which enters into force.

However, our current understanding is that European Patent Attorneys in the UK will continue to have rights of audience before the UPC even though the government of the UK has recently indicated that it (that is, the UK as such) will not take part in the UPC as a relevant state.

In any event, very recently the German Constitutional Court has decided that the UPC system is indeed contrary to the German Constitution because the necessary majority was not achieved in the German Parliament. What happens next is therefore very much up in the air.

It is also finally worth mentioning that even if the EPO starts to grant unitary patents, as the treaty envisages, when the relevant treaty has entered into force, the EPO will nonetheless continue to grant national patents for those countries which are not members of the EU or which are not within the unitary patent system and this includes, of course, the UK.

Brief Conclusion

This note is intended for the benefit of our clients and interested parties and is not intended to replace detailed advice in any given set of circumstances. Nonetheless, we hope that this guidance will serve to dispel false statements which exist regarding the future of European patents and the UK and European Patent Attorneys in the UK. If you have any questions, please contact your regular contact Attorneys in Avidity IP.