Brexit And Patents: 10 Key Things To Know
Published date | 26 November 2020 |
Subject Matter | Intellectual Property, Patent |
Law Firm | Gowling WLG |
Author | Mr Gordon Harris |
On 31 December 2020, the Brexit transition period comes to an end and significant changes to the law in the UK will take effect.
For patents and the law in relation to patents, there are some important soundbites for businesses to be aware of - some of which you may already have heard about, while others may be news outside the UK (even for experienced patent lawyers).
- For the obtaining and maintaining of
patents, there will be little change. This is because
- The UK national patent system is (and always has been) governed by national and international law, not EU law; and
- The European patent system, pursuant
to which a patent covering the UK may be obtained (as a UK
'designation' of a European patent e.g. EP(UK) xxxxxxx), 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)
- There will be no change to the
office(s) overseeing the grant of such patents and to which
maintenance fees need to be paid.
- However, the UK's address for
service rules in respect of patents are changing. 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 from 1
January 2020 will need to comply with the new regime. There will be
transitional provisions for applications and proceedings that
remain pending on 1 January 2021.
- UK patent attorneys'
solicitors' and barristers' entitlement to represent their
clients before/in proceedings in the EPO and the UK IPO will
continue.
- 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
EPO's remit to hear post-grant oppositions filed within the
first nine months of a European patent designating the UK will
continue too).
- There will be no change to the rules as to standing to sue and the establishment of the tort of patent infringement in the UK. For example, quia timet infringement actions will continue to be available upon consideration of the same legal principles, and so it will remain possible to bring a non-strikeable claim for infringement before a relevant marketing authorisation has been granted where the principles...
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