HSE LEGALcurrents

On June 23, 2016, the United Kingdom (UK) voted to exit the European Union (EU). This leaves many of our clients who own patents and trademarks in the EU wondering how the UK’s exit will impact their rights. Neither the UK nor the EU have any legislation in place to address this issue. The good news is that protection in the UK under all EU intellectual property rights will remain in place for now, as the UK will remain a member of the EU until the terms of its EU exit are determined. We expect that over the next two (or more) years, while the UK negotiates the terms of its exit from the EU, the UK will enact legislation to determine how intellectual property rights will be handled.

Patents

Patent protection in the UK may be acquired by obtaining a UK patent either directly through the UK Intellectual Property Offi­ce or through the European Patent Of­fice (EPO) by validation of a granted European Patent (EP) speci­fically in the UK. These options for obtaining patent protection speci­fically in the UK should not be affected by the UK’s exiting the EU, as the EPO is part of the European Patent Organization, which is a separate body from the EU. The EU is also developing an option for obtaining a Unitary Patent (UP) upon grant from the EPO and a Uni­fied Patent Court (UPC) system to enforce UPs in the EU, although such option is not expected to be available until 2017, at the earliest. If and when such UP and UPC systems are made available, the protection provided by a UP would not extend to the UK once the UK has exited the EU. Separate validation of a granted EP specifically in the UK must be separately considered even when obtaining a UP validation for the granted EP.

Trademarks Registered in the European Union (EUTMs, formerly known as CTMs or Community Trademarks)

The EUTM system is available to only EU Member States, so after the withdrawal and negotiation period, the UK likely cannot participate in the EUTM system. The laws and regulations governing EUTMs have no provisions regarding the departure of a country from the EU, so it is unclear whether EUTM rights will be recognized in the newly-independent UK. Further, the UK Intellectual Property Of­fice has issued no guidance on this situation. The

future could bring several situations: (a) the UK could recognize all EUTMs or all EUTMs ­led and/or registered by a certain date; (b) the UK could require rights holders to “extend” EUTMs to the UK, which could include ­filing documents with the UK Intellectual Property Of­fice; or (c) while unlikely, EUTMs could no longer be recognized or offered protection in the UK, which would require rights holders to ­le new applications in the UK.

We expect this issue to gain clarity over the next few years. We will monitor developments and provide recommendations as options develop for maintaining and acquiring trademark and patent protection in the UK.

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