Post Brexit intellectual property rights

The UK left the EU at the end of January 2020 and the transition period ended on 31 December 2020. In this guide we have summarised the changes to IP rights effective as of 01 January 2021.

With offices in both the UK and Germany, D Young & Co’s service will not be affected by Brexit and we will continue to advise on EU, UK and German trade marks, designs and copyright. Our services relating to European, UK and German patents are unaffected by Brexit.

If you have any queries or need advice relating to how Brexit may affect your intellectual property rights, please do not hesitate to get in touch with your usual D Young & Co contact or email us at brexit@dyoung.com.

This guide was last updated 20 January 2022.

An address for service in the UK, Gibraltar or the Channel Islands is required for any new application for a patent, a trade mark or a design filed at the UKIPO from 01 January 2021. This includes European patents validated in the UK. In addition an address for service in the UK, Gibraltar or the Channel Islands is required if you wish to challenge or defend a patent, trade mark or design in contentious proceedings at the UKIPO.

From 01 January 2021 UK national and EU Customs AFAs granted by the Customs authorities in the UK continue to remain in place in relation to the UK only. Any EU AFAs granted by the Customs authorities of another EU member state no longer cover the UK. Importantly, EU AFAs granted by the UK Customs authorities will no longer cover remaining member states of the EU after 01 January 2021.

From January 2021 UK businesses can still apply for and hold EU trade marks in the same way they can apply for and hold trade marks for other overseas jurisdictions, however EU trade marks are valid in EU member states only and are no longer protected in the UK.

EU trade mark registrations

All registered EUTMs were cloned into new UK trade mark registrations on 01 January 2021. Each new right is referred to as a comparable UK trade mark, and has been created automatically and at no cost to the registered owner. The trade mark has the same legal status as if it had been applied for and registered under UK law. The registration retains the filing date recorded against the corresponding EUTM and also has inherited any priority and/or seniority dates. The registration retains its existing EUTM registration number but is prefixed with UK009…. so it is easily identifiable as a comparable UK trade mark.

No certificate of registration is issued but owners of this new right are able to access the information online or obtain a certified copy of the registration. The comparable UK trade mark is a fully independent UK trade mark which can be challenged, assigned, licensed or renewed separately from the corresponding EUTM.

EU trade mark applications

An EUTM application which is pending on 01 January 2021 can be re-filed as a new UK trade mark application within a period of nine months from 01 January 2021, maintaining the filing date, priority date or seniority date. The trade mark must be identical and seek protection for the same goods and services to the EUTM or contained within the corresponding EUTM application. It will be subject to the usual application process in the UK. The UKIPO has confirmed that current official filing fees will apply: £170 for one class of goods/services and an extra £50 for each additional class.

Be aware that if you file a UK trade mark application that does not correspond to a pending EUTM application in the nine months after 01 January 2021 a third party could file a UK application after yours and claim the date of an earlier corresponding EUTM application that was pending at 01 January 2021. Where this happens, the later-filed UK application will take precedence.

Conversion

Eligible EUTMs which were in the three-month period to request conversion into a national right at 01 January 2021 were not included in process of cloning into a comparable UK trade mark. The EUIPO will not accept requests for conversion after 31 December 2020. As long as the request was filed by 31 December 2020, it will be processed by the UKIPO even if the EUIPO does not communicate it to the UKIPO until after this date.

Certification and collective marks

The UKIPO has created comparable rights registered before 01 January 2021. The UKIPO will contact owners if they need more information to support these rights.

International trade mark registrations which designate the EU

All international trade mark registrations which designated the EU prior to 01 January 2021 are protected in the UK as comparable UK trade marks. On 01 January 2021 a new comparable trade mark (IR) was created for each international (EU) trade mark designation which had protected status immediately before 01 January 2021. Each new comparable trade mark (IR) is treated as if applied for and registered under UK law. As such, it may be challenged, assigned, licensed or renewed separately from the original international registration.

When the EU was designated in an international registration more than once, a new comparable trade mark (IR) has been created for each designation. Where there were multiple trade marks created from a single international trade mark, each comparable trade mark (IR) is independent.

In these scenarios, the filing and registration date given to the comparable trade mark (IR) corresponds to the date on which protection in the EU was conferred.

Where EU protection was obtained as a result of a subsequent designation, the relevant date of the comparable trade mark (IR) is the date on which the subsequent designation was recorded in the international register.

New comparable trade marks (IR) were created at no cost to the holder ensuring minimal administrative and cost burdens.

To identify UK rights created in respect of international registrations (which designated the EU), the number allocated to the comparable trade mark is the last eight characters of the international trade mark prefixed with "UK008".

International trade marks which have a pending EU designation

If your international registration designating the EU is pending on 01 January 2021, you will be able to apply to register a UK trade mark in the nine months after 01 January 2021 and retain the filing date of the pending EU designation.

Where an application for protection of an international trade mark designating the EU was made before 01 January 2021, you may not receive confirmation of the international trade mark or subsequent designation until after 01 January 2021. In this case, you can still claim the earlier international (EU) date when applying to register the same trade mark in the UK. This is conditional upon the UK application being filed within nine months of the date on which the international registration was recorded by WIPO. For a subsequent designation, it will be the date on which the request for EU protection was recorded in the International Register.

These applications are treated as UK applications and will be examined under UK law. Application fees will also be applicable.

If a notice of refusal was issued by the EUIPO prior to 01 January 2021 this trade mark cannot be used for the purposes of claiming an earlier date when filing a UK trade mark application.

Transformation

If an international trade mark was cancelled and a request was made to transform your international trade mark (EU) into a EUTM prior to 01 January 2021, you can file a UK application based on this right.

The deadline for doing so is nine months from 01 January 2021 to allow you to claim the earlier date assigned to the EU designation.

Where the corresponding EU designation was protected at the time of the international trade mark’s cancellation, the date that may be claimed for the UK application will be the date of the international registration.

Where EU protection was obtained through a subsequent designation, the date on which the request was recorded in the international register may be claimed for the UK application.

Where the EU designation was not yet protected at the time of cancellation of the international registration, you may claim the date of the international application. In the case of a subsequent designation, you may claim the date on which the request was recorded in the international register.

In all cases, if a priority claim under the Paris Convention was made for your international registration, you may claim that date against your UK application.

Opt-out of comparable UK trade marks

There is provision to opt-out if the trade mark owner does not wish to own a comparable UK trade mark. However, it is not possible to opt-out if the mark has been used in the UK by the registered owner or with their consent; if the mark is subject to an assignment, licence, security interest or other agreement or document; or if there are pending proceedings based on the comparable UK trade mark.

Opt-out requests can only be made after 01 January 2021. Any requests made before then were not valid. A form relating to this request is now available. It is a legal requirement to advise interested third parties for the opt-out to have effect. You must confirm that such action has been taken.

If an opt-out has been exercised in circumstances where it was not permitted, the comparable UK trade mark may be reinstated.

Renewals

The comparable UK trade mark will retain the same renewal date as the corresponding EUTM and renewal fees will need to be paid to both the UKIPO and the EUIPO in future.

EU trade marks that expire six months after 01 January 2021

Where the comparable UK trade mark is due for renewal in the six months after 01 January 2021, a renewal reminder from the UKIPO will be sent to the holder on the renewal date (or as soon as possible thereafter). Holders will be provided with a further six-month period for the comparable UK trade mark to be renewed in the UK. Standard official renewal fees will apply: £200 for one class and £50 for each additional class. No late renewal fee will be charged by the UKIPO during this six-month period.

Where an EUTM is due for renewal after 01 January 2021, early payment of the fee with the EUIPO, prior to 01 January 2021 will have had no effect (in the UK) and renewal fees are be payable at the UKIPO.

EU trade marks which expired before 01 January 2021

A comparable UK trade mark will have been created in the following scenarios:

1. The EUTM has expired in the six months prior to 01 January 2021.
2. The EUTM was not subject to a late renewal action at the EUIPO and was still within its six-month late-renewal period.

In the above scenarios the comparable UK trade mark holds an “expired” status and its continued effect in the UK will be dependent upon late renewal of the corresponding EUTM at the EUIPO. Where the EUTM is subsequently renewed as a late renewal the comparable UK trade mark will automatically be renewed in the UK and no renewal fees will need to be paid to the UKIPO.

If the EUTM is not renewed at the EUIPO, the comparable UK trade mark will be removed from the UK register after the original EUTM’s late renewal period, but with effect from 01 January 2021.

Pending EU trade mark oppositions

An opposition or invalidity action against an EUTM that was pending on 01 January 2021 and based only upon a UK right will be dismissed.

EU trade mark cancellation proceedings

Where an EUTM is subject to revocation and/or invalidity proceedings (collectively cancellation proceedings) which were ongoing on 01 January 2021, the comparable UK trade mark will ultimately suffer the same fate as the EUTM, that is, if the EUTM is held to be invalid then the comparable UK trade mark will also be held to be invalid and the date of effect of the declaration of cancellation in the UK will be the same as in the EU.

However, the cancellation will only have effect if the grounds are applicable in the UK. This means you do not need to file a separate action against the comparable UK trade mark after 01 January 2021.

Where an EUTM is the subject of an ongoing cancellation action, the UKIPO will record this action against the comparable UK trade mark when it is created. Once a final decision has been reached (no further appeals are available), the comparable UK trade mark will suffer the same fate. To ensure the cancellation action is recorded correctly by the UKIPO, a copy of the cancellation action should be sent to the UKIPO.

The exceptions to cancellation of the comparable UK trade mark apply where the ground for cancelling the corresponding EUTM would not apply in the UK. In this instance, the comparable UK trade mark will not be cancelled. This will be referred to as a derogation.

If the owner of a comparable UK trade mark is sending the notice of cancellation to the UKIPO, and they believe the decision is not applicable to their comparable UK trade mark, they should also include the notice of derogation, explaining why the comparable UK trade mark should not be cancelled.

If the notice of cancellation is forwarded to the UKIPO by a third party, the UKIPO will send a copy of this notice to the owner of the comparable UK trade mark. If the owner believes the cancellation action should not apply in the UK, they can file a notice of derogation within one month following receipt of the cancellation notice.

In the event the UKIPO becomes aware the corresponding EUTM has been cancelled, it will write to the owner of the comparable UK trade mark and give them one month to file the notice of derogation.

Once in receipt of the notice of derogation, the UKIPO will decide whether or not the comparable UK trade mark should be cancelled.

The UKIPO has provided the following examples of derogation:

• Derogation is likely to succeed where cancellation of the corresponding EUTM was based on an earlier right which would not have applied in the UK, for example, national trade marks of countries other than the UK.
• Derogation is unlikely to succeed where the cancellation of the corresponding EUTM was based on an earlier UK trade mark or other earlier right that covers the UK.
• Derogation is unlikely to succeed where the EUIPO’s cancellation decision is based on absolute grounds because of its meaning in English.
• Derogation is unlikely to succeed on the basis that the trade mark is open to objection in all states of the EU (for example, where the trade mark consists of a three-dimensional trade mark).

Use requirements

Use of an EUTM, whether inside or outside of the UK, which was made prior to 01 January 2021 counts as use of the comparable UK trade mark.

Where the relevant period for use includes time prior to 01 January 2021, use in the EU will be considered. However, where the relevant five-year period includes time after 01 January 2021, use of the comparable UK trade mark in the UK will also have to be shown.

In all cases, the five-year period of suspended use is activated by last use of the corresponding EUTM registration or comparable UK trade mark. Where that use was made in the EU before 01 January 2021 (whether inside or outside the UK), it will count for the purposes of the comparable UK trade mark.

Reputation

A similar approach (to use) is being adopted in relation to reputation. The reputation of the corresponding EUTM in the EU prior to 01 January 2021 (but not necessarily the UK) will be considered for the purposes of the comparable UK trade mark.

Assignments

Where an EUTM was the subject of an assignment prior to 01 January 2021 which was not recorded on the EUTM Register the comparable UK trade mark will have been created in the name of the assignor. Both the assignor and assignee will have the right after 01 January 2021 to apply to the UKIPO for recordal of the assignee as owner of the comparable UK trade mark.

Licences and security interests

EUTMs which are the subject of a licence or security interest which authorises actions in the UK will continue to have effect in the UK. The licence or security interest will be treated as if it applies to the comparable UK trade mark. However, the recordal of these rights will not be automatic. Where a licence or security interest is already registered at the EUIPO before 01 January 2021 the UKIPO will extend the period within which such transactions must be recorded on the UK Register for a comparable UK trade mark to 12 months from 01 January 2021. If you have any licences recorded against your EUTM that should be re-recorded against the comparable UK trade mark, please contact us.

Any licensee should be notified of the new comparable UK trade mark and checks should be made to ensure the creation of the new comparable UK trade mark does not breach any existing agreement.

EU trade mark registrations and applications reinstated after 01 January 2021

These trade marks will not automatically be cloned into comparable UK trade marks. The holder of these trade marks will need to make a specific request to the UKIPO to create a comparable UK trade mark. Reinstatement of EU rights will only be considered if an application is made to the EUIPO within 12 months of the missed deadline.

If an EUTM registration is reinstated after 01 January 2021 the holder will need to inform the UKIPO within six months to obtain a comparable UK trade mark.

If you have a pending EUTM application which is reinstated after 01 January 2021 and holds a filing date before 01 January 2021, you may submit a UK trade mark application claiming the earlier EU filing or priority date. This must be actioned within nine months of the date the corresponding EUTM application was restored.

Address for service

From 01 January 2021, it is necessary to have an address for service in the UK, Gibraltar or the Channel Islands for any new applications, for defending new oppositions and other challenges, and for filing new oppositions, revocations and invalidity actions. It is not necessary to have an address for service in the UK, Gibraltar or the Channel Islands for post registration actions such as renewals. It is also not necessary to have such an address for newly created comparable trade marks (excluding those created from international trade marks) and contentious matters relating to the same, for a period of three years from 01 January 2021. In view of the requirement to have an address for service in the UK, Gibraltar or the Channel Islands for new matters, it makes sense, from an administrative point at least, to use one address for service in the UK, Gibraltar or the Channel Islands across the trade mark portfolio of one registrant.

Jersey

Brexit will have no effect on trade mark rights in Jersey. The Trade Mark (Jersey) Law 2000 says that, despite Jersey not being a member of the EU "The Community Trade Mark Regulation shall be construed as if Jersey were a member state". This means trade marks registered before the EUIPO are automatically enforceable in Jersey without requiring local re-registration. Local authorities in Jersey have confirmed there are no plans to amend this law.

Guernsey

Brexit will have no effect on trade mark rights in Guernsey. The Trade Marks (Bailiwick of Guernsey) Ordinance 2006 allows for trade mark filings which are independent of the UK or EU. The smaller Channel Islands of Alderney, Sark and Herm are part of the Bailiwick of Guernsey and are covered by any registration obtained.

Gibraltar

Brexit may have an effect on trade mark rights in Gibraltar, the extent to which is not known at present. Gibraltar has its own Trade Mark Act (1948) which allows for the extension of national UK registrations to Gibraltar by filing a certified copy of the UK trade mark registration. Since 1996 the Registrar in Gibraltar has also issued Certificates of Registration based on EU registrations. This is in addition to accepting applications based on international registrations designating both the EU and UK. The Registry has not confirmed whether its practice will change after 31 December 2020 but it is expected that the practice of issuing Certificates of Registration based on EU registrations and international registrations designating the EU will cease. It also remains to be seen whether Gibraltar will permit the renewal of existing EU-based registrations.

It is still possible to register trade marks based on UK registrations and international trade marks designating the UK. From 01 January 2020, it is also possible to register in Gibraltar based on comparable UK trade marks.

Isle of Man

Brexit will have the same impact as in the UK.

UK Parliament legislation (The Designs and International Trade Marks (Amendment etc) (EU Exit) Regulations 2019) ensures that EU designs continue to be protected and to be enforceable in the UK with the provision of an equivalent design registered in the UK. The legislation came into force on 01 January 2021.

Registered Community designs

The UK Government has confirmed through the legislation that an equivalent enforceable registration is provided for existing registrations which are fully published. The legislation also applies to international (Hague) design registrations from 01 January 2021, which designate the EU, and which are published and deemed accepted by the EUIPO. The creation of the equivalent design registration in the UK is at minimal administrative burden, and without cost to the registered owner. The registered owner of the newly-created UK right has the option to opt out.

Pending registered Community designs

For Community designs which are pending on 01 January 2021, or which are registered but not yet published (as a result of deferred publication), the UK Government provides an option for the applicants to apply for the same protection in the UK within a period of nine months until 30 September 2021, maintaining the date of filing (and priority) of the EU application. This re-application process also applies to international (Hague) design registrations from 01 January 2021, which designate the EU, and which are either unpublished; still at the application stage; or which are not yet deemed accepted by the EUIPO.

Unregistered Community designs

Any unregistered Community design right arising before 01 January 2021 is still valid for the remaining period of protection as a UK "continuing unregistered design" (CUD). In addition, a "supplementary unregistered design" (SUD), is available in UK law from 01 January 2021, which mirrors the features of the unregistered Community design. The provision of the SUD means that design features including surface decoration (for example, 2D logos) can be protected under unregistered design law in the UK going forward.

The SUD will be established by first disclosure in the UK or another qualifying country. First disclosure in the EU will not establish a SUD right. First disclosure in the EU could destroy the novelty of the design should you later seek to establish UK unregistered rights and disclosure should therefore be considered carefully to ensure you have adequate protection in your most important market.

New UK registered designs

Filing of a new UK trade mark or design application, in the designated nine-month period, will be at the usual cost and subject to the usual application processes in the UK.

UK registered design numbering system

For UK registered designs that have been re-registered from an existing EU registered design, the UK registered design number consists of the full 13-digit number assigned to the EU registered design, but prefixed with the digit “9”.

For international registered designs registered prior to 01 January 2021 that designate the EU, the number allocated to the corresponding UK registered design consists of the full international design number prefixed with the digit “8”.

Registered Community designs – renewals

Re-registered UK design registrations retain the same renewal date as their corresponding EU registered designs. Once the re-registered UK design registration has been created a separate renewal fee is due in both the EU and UK.

Where the re-registered UK design registration is due for renewal in the six months after 01 January 2021, a renewal reminder from the UKIPO will be sent to the holder on the renewal date (or as soon as possible thereafter). Holders will be provided with a further six-month period (running from the date of the reminder letter) for the re-registered UK design registration to be renewed in the UK. Standard official renewal fees will apply and no late renewal fee will be charged by the UKIPO during this six-month period.

Where an EU registered design is due for renewal after 01 January 2021, early payment of the fee with the EUIPO, prior to 01 January 2021, will have had no effect in relation to the UKIPO and a renewal fee will still be payable at the UKIPO in respect of the re-registered UK design registration.

EU registered designs which have expired before 01 January 2021

Re-registered UK design registrations will also be automatically created in the following scenario:

1. The EU registered design was due for renewal in the six months prior to 01 January 2021.
2. The EU registered design has not been subject to a late renewal action at the EUIPO.
3. The EU registered design is still within its six month late renewal period.

In the above scenario the re-registered UK design registration holds an expired status and its continued effect in the UK will be dependent upon late renewal of the corresponding EU registered design at the EUIPO. Where the EU registered design is subsequently renewed as a late renewal the re-registered UK design registration will automatically be renewed in the UK and no renewal fees will need to be paid to the UKIPO.

If the EU registered design is not renewed at the EUIPO, the re-registered UK design registration will be removed from the UK register after the original EU registered design’s late renewal period.

EU registered design invalidity proceedings

Where an EU registered design is subject to invalidity proceedings which were ongoing on 31 December 2020, the UK re-registered design will in most cases suffer the same fate as the EU registered design, that is, if the EU registered design is held to be invalid, then the UK re-registered design will also be held to be invalid and the date of effect of the declaration of invalidity in the UK will be the same as in the EU.

That being said, where a EU registered design in these instances is held to be invalid, the UK re-registered design will not be invalidated if the grounds on which the EU registered design was declared invalid would not apply or would not have been satisfied in relation to the UK re-registered design if:

1. the UK re-registered design had been the subject of an entry on the register as at the date the invalidation proceedings were instituted, and
2. an application for a declaration of invalidity of the re-registered design based on those grounds had been made on that date under section 11ZA (the UK route for invalidating a UK registered design).

In the European Economic Area (EEA), namely the member states of the European Union plus Iceland, Liechtenstein and Norway, IP rights are considered “exhausted” once goods have been placed on the market by the IP owner or with the owner’s consent anywhere within the EEA.

After 01 January 2021, IP rights in relation to goods being imported into the UK from an EEA country continue to be considered as exhausted at least for a temporary period. This is not, however, reciprocated by the EU for products going the other way. This means that IP rights holders may oppose the parallel importation by third parties of goods into the EU from the UK in so far as this would constitute an infringement of the IP right concerned. The UK Government is considering options for what exhaustion regime should apply after the end of the temporary period and launched an open consultation on the “UK’s future exhaustion of intellectual property rights regime” in the summer of 2021. Upon review of the responses, the government announced on 18 January 2022 that the current IP exhaustion regime will remain in place for the time being, as there is not enough data available to understand the economic impact of any alternative proposals. There is no timeframe proposed for further development of the framework.

EURid (the registry responsible for the day-to-day running of the .eu top level domain) has issued guidance regarding the registration and ownership of .eu domain names, details of which are set out below.

As of 19 October 2019, only (i) EU citizens (independently of where they live), (ii) EU and EEA residents, and (iii) organisations, businesses and undertakings established within the EU or EEA are permitted to register or hold an .eu domain name.

This means that, as of 01 January 2021 (00:00:00 CET), UK undertakings or organisations established in the UK but not in the EU/EEA, UK citizens who are not resident in an EU/EEA member state, and UK residents who are not EU/EEA citizens (UK registrants) are no longer eligible to hold an .eu domain name.

Holders of .eu domains are therefore strongly advised to check whether they meet the above eligibility criteria as soon as possible.

EURid has set out the following steps for UK registrants.

On 01 January 2021

If your .eu domain name does not comply with the .eu regulatory framework when the transition period ended (31 December 2020), you will have received an email from EURid on 01 January 2021 notifying you of the suspension of your .eu domain name. A suspended domain name will no longer function or be capable of supporting any active services such as websites or emails, but may still be reinstated if registration data is updated to meet the eligibility criteria.

If your .eu domain name remains uncompliant with the .eu regulatory framework, you will receive an email from EURid on 01 April 2021 notifying you of the withdrawal of your .eu domain name. A domain name with a status that has been changed to “withdrawn” will no longer be in the zone file and will no longer support any service.

Finally, EURid no longer allows the registration of any new .eu domain name by UK registrants. Similarly, it will allow neither the transfer, nor the transfer through update, of any .eu domain name to UK registrants.

01 January 2022

All affected domain names will be revoked and become available for general registration one year after the end of the transition period. Their release will occur in batches for security reasons.

Next steps

If you are not eligible to retain your .eu domain you are strongly advised to contact your domain registrar in order to:

1. discuss the possibility of transferring your internet presence to another top level domain (such as .com, .co.uk, .uk, etc.);
2. consider seeking advice from your local domain name registrar on whether the terms of your contractual agreement provide for any recourse in the event of withdrawal or revocation of a .eu registration;
3. consider migrating services and functions that your .eu domain name, website or associated email address is linked to or supports, such as:
   
   (a) .eu email addresses that access critical business processes, including online banking services, online payment providers, government services like HMRC online, or payment verification systems,
   
   (b) .eu email addresses that access services that use an email and password for registration, including membership organisations and clubs, social media, and two-factor authentication services,
   
   (c) .eu email addresses used to communicate with customers, clients, internal communications or to distribute mailing lists,
   
   (d) .eu websites or email accounts that holds data that you need to transfer before any loss of access,
   
   (e) virtual private network (VPN) or other services that use your .eu domain name, and
   
   (f) trade mark or intellectual property rights impacted by the loss of your .eu domain name; and
   
4. seek legal advice.

Similar eligibility restrictions may apply to EU member state country code top level domains such as .fr or .it.

Please also note that after 01 Jan 2021, with the exception of "well known marks" (as defined under Article 6bis of the Paris Convention), IP rights holders are no longer able to rely on their UK registered or unregistered rights when seeking to challenge .eu domain names that are subject of speculative and abusive registration.

There is no change to the way patents can be filed and prosecuted. It is business as usual.

The UK will continue to be a member of the European patent system, which is governed by the EPC, a treaty between contracting states to the EPC that is, and will remain, completely separate from the EU.

A number of non-EU members, such as Norway, Switzerland and Turkey, have long been EPC contracting states. Accordingly, the UK's exit from the EU simply means that the UK will join these other EPC contracting states who are not members of the EU. It will not change the EPC in any way.

The UK exit from the EU has no effect on our ability to represent clients before the EPO. There will be no change in our ability to file or prosecute patent applications or our ability to file or defend oppositions to granted patents. The UK Government also explicitly notes that, separate to UK patent matters, European patent attorneys based in the UK, such as D Young & Co, can continue to represent applicants before the European Patent Office (EPO), since it is not an EU body; this has also been confirmed by the EPO itself.

Patent protection in the UK will continue to be available via the EPO by validating granted European patents in the UK after grant, and our European patent attorneys will continue to act in the usual way in all matters before the EPO.

European patent applications may still designate all contracting and extension states and we will continue to be able to secure protection across the EPC.

Correspondence addresses

European patent attorneys based in the UK will continue to represent applicants before the European Patent Office, since it is not an EU body.

Whilst a current address for service can be kept for existing UK patents, for any new application for a patent filed at the UKIPO from 01 January 2021 an address for service in the UK, Gibraltar or the Channel Islands is required. This includes for European patents subsequently validated in the UK after this date. In addition an address for service in the UK, Gibraltar or the Channel Islands is required if you wish to challenge or defend a patent in contentious proceedings at the UKIPO.

Unitary patent and Unified Patent Court

The Unified Patent Court will hear cases relating to European patents and the new unitary patent – both administered by the non-EU European Patent Office (EPO). The Unified Patent Court will be an international patent court established through an international agreement (the Unified Patent Court Agreement) between the EU countries.

UK, EU and third country businesses will still be able to use the Unified Patent Court and unitary patent to protect their inventions within the EU, and they will be able to validate the UK upon grant of an EP application as before. UK business will still be able to use the Unified Patent Court and unitary patent to protect their inventions within the other contracting EU countries.

EU Biotech Directive

The UK Government has implemented legislation into UK national law to retain the EU law (EU Biotech Directive) relating to biotech inventions after 01 January 2021. Therefore, the legal requirements for patenting biotech inventions remain in place - these requirements are already implemented in UK national patent law. Patent examiners will continue to apply the same law when examining 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 prior to 01 January 2021.

From 01 January 2021 the SPC regime in the UK continues to operate largely as before. The requirements for obtaining an SPC are largely unchanged. However, under the Northern Ireland protocol, the process for applying for an SPC in the UK has changed as explained below.

D Young & Co continues to be able to represent clients in relation to SPCs. Although SPCs are based on EU legislation they are national rights, so the filing of SPCs remains unchanged. There is no change in our ability to file UK SPCs, nor SPCs in other European countries where we continue to instruct our trusted network of SPC agents.

New SPCs based on UK marketing authorisations

The UK SPC legislation which came into effect on 01 January 2021 largely mirrors the pre-existing EU SPC Regulation. However, from 01 January 2021 a UK national marketing authorisation (MA) is required for both medicinal products and plant protection products in order for the product to be entitled to a UK national SPC. In addition, although existing EU case law on SPCs continues to have authority on first instance courts in the UK, it is possible that the case law applied to the UK SPC regulation may depart from the EU case law over time.

The UK constitutes four countries: England, Scotland and Wales (together Great Britain) and Northern Ireland. Under the Northern Ireland protocol, the pre-existing EU legislation relating to regulation of medicines and plant protection products remains in force in Northern Ireland.

In view of this, from 01 January 2021, the UK’s national Medicines & Healthcare Products Regulatory Agency (MHRA) grants MAs for the whole of the UK, Great Britain only, or Northern Ireland only. It is possible to apply for one type of MA first, which takes effect in one part of the UK and then subsequently apply for a further MA extending it to the rest of the UK.

The deadline for applying for an SPC is unchanged (at six months from the grant of the UK MA or six months from the grant of the patent, whichever expires later) and the same documentation and evidence is required.

However, the SPC only applies to the parts of the UK which the MA covers. If the MA holder wishes to extend the SPC to other parts of the UK based on a subsequent MA, it is necessary to apply to the UKIPO within six months of the issuance of the subsequent MA. As with the pre-Brexit SPC legislation, this must take place before expiry of the basic patent: once the patent has expired and the SPC is in force in only part of the UK, it will not be possible to extend it to the rest of the UK or to apply for a new SPC covering other parts of the UK.

Of course, there may be instances where differing MAs are issued for different parts of the UK and we may see a patchwork of protection for medicinal products in the UK.

Existing SPCs based on EU marketing authorisations

EU-wide MAs granted for medicines by the European Medicines Agency (EMA) from 01 January 2021 do not apply to the UK and are not available to support UK SPCs filed from 01 January 2021.

As indicated below, all pre-existing granted EMA MAs have been “cloned” into UK MAs from 01 January 2021. For pre-existing pending or granted UK SPCs based on EMA MAs, the applicant may be asked to provide information on the cloned UK MA, so that this can be recorded on the SPC section of the Patents Register. This does not affect the validity of the SPC and we are able to attend to such a request if the UKIPO issues it.

All pending SPC applications in the UK will continue to progress: there is no need to refile these and these will cover all four countries forming the UK.

Duration of SPCs

The duration of SPCs, regardless of whether filed before or after 01 January 2021, will remain the same - based on 15 years from either the UK MA date, or the date of the first MA in an EEA member state, whichever is sooner. Of course, this means that if an MA in an EEA member state is granted before the UK MA, the duration of the UK SPC will be based upon the date of authorisation in the EEA member state, even though marketing of the product in the UK will only be permitted once a UK MA has been granted. The term of the SPC, as now, is capped at five years from the expiry of the basic patent.

New UK paediatric extensions to SPCs

The six-month extension remains available from 01 January 2021 for SPCs for medicines on which agreed paediatric studies have been carried out. For paediatric extensions filed after 01 January 2021, the requirements arel largely the same as previously, and the process of applying for an extension remains the same - though existing UK legislation also applies to the availability of this extension.

Applicants are still able to make the request at the same time as filing the SPC application, or at any point up to two years before the SPC expires. The main difference is that it is no longer necessary to show that the product is authorised in all EEA member states: it is only necessary to show it has an MA in the UK. As was previously the case, the six-month paediatric extension is not available for orphan medicines, which instead retain the additional two years’ market exclusivity as set out below.

Existing UK paediatric extensions to SPCs

The pre-existing EU legislation continues to apply for paediatric extensions to SPCs for medicines which were pending or granted before 01 January 2021. In particular, for such extensions, it is still necessary to show that the product is authorised in all EEA member states.

SPC manufacturing and stockpiling waiver

EU legislation introduced in 2019 provided for a waiver from SPC protection which allows third party manufacturers to make SPC-protected medicines for export outside the EU. It also allows making and storage of medicines during the last six months of an SPC ready for sale in the EU after the SPC expires.

Under the EU legislation, the waiver will initially only apply to SPCs that are applied for on or after 01 July 2019. From 02 July 2022, it will also apply to SPCs that were applied for before 01 July 2019, but only if they had not taken effect before 01 July 2019. It is also subject to a number of conditions.

The UK Government intends to maintain the waiver after 01 January 2021, but with some important changes. Draft legislation on this matter is currently before the UK Parliament. The waiver will maintain the right of third party manufacturers to manufacture for export, but only to countries outside both the UK and EU, while the SPC is in force. The waiver will also maintain third parties’ right to manufacture for storing within the last six months of the term of the SPC for sale in the UK and EU after expiry of the SPC.

The EU is not intending to mirror this change in its own legislation. This will mean that, if the medicine does not have SPC protection in the UK, the waiver under EU legislation will allow third party manufacturers to manufacture in the EU for export into the UK.

From 01 January 2021, there are also changes in the regulation of human and veterinary medicines and the various forms of regulatory-based protection available. For medicines, pre-existing marketing authorisations (MAs) granted centrally by the European Medicines Agency (EMA) have automatically been converted into UK MAs from 01 January 2021, but MA holders may be required to submit essential baseline data to the Medicines & Healthcare Products Regulatory Agency (MHRA) and a UK-based MA holder will need to be identified within 24 months from 01 January 2021. Pre-existing UK MAs based on the mutual recognition or decentralised procedures are unaffected.

For anyone seeking a new MA in the UK from 01 January 2021, there are likely to be a number of different routes to consider, and a UK-based MA holder will be required.

Data and market exclusivity

Regulatory data and market exclusivity remains available based on UK from 01 January 2021, and the period of “8+2+1” years for this form of regulatory protection remains unchanged. From 01 January 2021 the start of this period will be the date of marketing authorisation in the EU or UK, whichever is earlier.

Orphan medicines

A dedicated regulatory system for orphan medicines (for the treatment of rare diseases) continues from 01 January 2021, and a specific UK orphan MA will be granted for such medicines. This largely mirrors the pre-existing EU system, but also includes a number of UK-specific matters such as the prevalence of the disease in the UK, the availability of satisfactory alternative treatment methods in the UK and the significant benefit of the product.

The ten-year market exclusivity for orphan medicines remains from 01 January 2021. This also begins on the date of authorisation in the EU or UK, whichever is earlier. Orphan medicines for which agreed paediatric studies have been carried out are, as previously was the case, be entitled to an additional two years’ market exclusivity. However, the pre-marketing EU orphan designation for medicines is not replicated in the UK: orphan status will be decided upon at the time marketing authorisation is granted.

The UK retains the existing “EU Bolar” law which exempts from patent infringement trials carried out on generic medicines in order to obtain regulatory approval, for marketing after the patent expires. Pre-existing legislation which exempts from patent infringement the various studies, trials and tests carried out on a pharmaceutical product in order to gain regulatory approval anywhere also remains in force.

With regard to copyright, the UK Government explains that, as a result of the UK’s membership of the main international treaties on copyright (which will not be affected by Brexit), the scope of protection remains largely unchanged after 01 January 2021. Further, the EU Regulations and Directives on copyright and related rights have been “ported” into UK law under the EU Withdrawal Act 2018. It explains, therefore, that the immediate issue is primarily one of reciprocity of those EU Regulations and Directives.

It identifies, among others, the following issues:

Sui generis database rights

Before 01 January 2021, businesses in European Economic Area (EEA) member states (such as the UK) were eligible for database rights in each member state (broadly, these rights do not arise in relation to databases created by non-EEA businesses).

From 01 January 2021, database rights which existed as of 31 December 2020 continue to exist in the UK and the EEA for the rest of their duration. However, only UK citizens, residents and businesses are eligible for new database rights in the UK. Similarly EEA member states are under no obligation to grant new database rights to UK businesses in those member states. In light of this the UK Government recommends reviewing existing licensing arrangements and, where possible, imposing licensing terms which mitigate this potential loss of rights.

Portability of online content service

Before 01 January 2021, UK consumers could access their online content services (for example, Netflix) when they temporarily travelled to another EU member state. The same was true for EU customers temporarily visiting the UK. Portability of online content services between the UK and EUceased at the end of the transition period. Consequently UK customers visiting the EU and EU customers visiting the UK may see restrictions to the content ordinarily available to them when in their home state.

Country-of-origin principle for copyright clearance in satellite broadcasting

Before 01 January 2021, if a satellite broadcaster cleared the copyright requirements in its “home” member state it could broadcast into any other EEA member state. This ceased to apply to broadcasts from the UK from 01 January 2021 and UK-based satellite broadcasters that previously relied on the country-of-origin copyright clearance rule when broadcasting into the EEA may need to now clear copyright in each member state to which they broadcast. The UK continues to apply the country-of-origin principle to broadcasts from any country. Wider issues regarding broadcasting and video on demand are addressed in the UK government’s specific guidance on this issue.

Orphan works

Before 01 January 2021 cultural heritage institutions established in a member state of the EEA were entitled to digitise orphan works in their collection and make them available online across the EEA without the permission of the right holder. The UK Government explains that UK-based cultural heritage institutions that continue to do this from 01 January 2021 may be infringing copyright.

Therefore, except for those in specialised industries (such as broadcasting) or with specific copyright portfolios (such as those with database rights), businesses are unlikely to be significantly affected, at least immediately, from 01 January 2021.