The United Kingdom has left the European Union and on 31 December 2020, the Brexit transition period came to an end. Some notable changes to the law in the UK are taking effect but many are remaining the same. Here are 10 things to remember in relation to UK Patents, European Patents and European Patents designating the UK:-
- For obtaining and maintaining European Patents, there is little change because:-
- the UK national patent system is (and always has been) governed by national and international law, not EU law.
- The European patent system, by which patent protection in the UK may be obtained (as a UK ‘designation’ of a European patent), 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)
- The European Patent Office (EPO) remains the office for filing European patent applications, searching and grant of European Patents. Maintenance fees continue to need to be paid to the EPO, so no change there either.
- The EPO will continue to hear post-grant oppositions filed within nine months of grant of a European Patent designating the UK.
- However, the UK’s address for service rules in respect of patents have changed. 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 will need to comply with the new regime.
- UK Patent Attorneys’, solicitors’ and barristers’ entitlement to represent their clients at proceedings in the EPO and the UK IPO will continue.
- Patent term extensions –
- From 1 January 2021, for an SPC to be sought in the UK, the relevant product must have marketing authorisation in the UK. However, the term of SPC protection will continue to be calculated by reference to the date of the first authorisation to place the product on the market in the area comprising the EEA and the UK.
- Paediatric extensions will be governed by the Human Medicines Regulations 2012 (as amended by The Human Medicines (Amendment etc.) (EU Exit) Regulations 2019) rather than EU regulation but with essentially the same effect for SPCs.
- 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 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 court systems in the UK therefore will not be affected by the introduction of the new system, and the jurisdictional challenges presented by it.
- Amendments to UK national legislation have been enacted in the form of The Patents (Amendment) (EU Exit) Regulations 2019. In the limited contexts in which the EU has legislated, most notably the Biotechnology Directive (no. 98/44) and the IP Enforcement Directive (no. 2004/48), necessary implementation into the UK’s national law has already taken place and is preserved as retained EU law. Notably, the UK continues to remain a member of the Paris Convention, relating to the priority filing system adopted worldwide.
- Exhaustion of rights after 31 Dec’2020 – The owner of intellectual property rights covering EU or EEA countries will be able to enforce such rights to prevent import into (and sale within) the EU/EEA of genuine goods placed on the market in the UK. (see related article )
Our Attorneys at Avidity IP would be happy to advise you further on any of the above matters. Please contact us via your preferred method.