“Brexit means Brexit” Olivia Murphy Chartered & European Patent Attorney Haseltine Lake LLP

Latest News

• Brexit Day: 29 March 2019 • Draft agreement published reflecting state of negotiations

between UK and EU on transitional arrangements - https://ec.europa.eu/commission/sites/beta-political/files/draft_agreement_coloured.pdf

• Transition period ends: 31 December 2020

• Draft agreement largely provides for continuity but

incorporates important provisions regarding IP (Article 50-57)

Patents

• Current European patent system not affected by Brexit (because EPC not part of European Union)

• Therefore, patents not covered by draft transition agreement

• EPs will continue to be capable of validation in the UK

before and after Brexit day

• Status of UPC/UP unclear; the UK has now ratified (as of 26 April 2018), but Germany has challenges on constitutional grounds

EU Trade Marks and Registered Community Designs

• Main focus of concerns regarding Brexit

• Draft transition agreement provides:

– The holder of any of the following intellectual property rights which have been registered or granted before the end of the transition period shall, without any re-examination, become the holder of a comparable registered and enforceable intellectual property right in the United Kingdom, as provided for by the law of the United Kingdom:

• The holder of an EU trade mark shall become the holder of a UK trade mark, consisting of the same sign, for the same goods or services;

• The holder of an RCD shall become the holder of a UK design registration for the same

design;

• The holder of a Community plant variety shall become the holder of an equivalent UK right.

File Trade Marks and Designs separately in UK?

• Continuity of protection of EUTM/ RCDs registered at end of transition period seems close to certain

• After transition period it will be necessary to file separately

• Present circumstances that may warrant separate national filing - Known litigation risk - Business focus on the UK

• Ongoing political uncertainty, legislation still needed in UK,

logistical challenges

• Third party monitoring of UK register likely to intensify

Unitary Patent Unified Patent Court

Existing European patent system

• Single European patent application • Central application procedure at the EPO • Central (EPO) opposition procedure within nine months of

grant • Central limitation BUT • Validated after grant as separate national patents • Infringement dealt with by national courts • Revocation must be sought at national courts

Problems with the existing system

• National validations – can be expensive – depends on countries (e.g. London Agreement)

• Multi-country infringement/revocation proceedings – expensive – different court procedures – different languages – different courts reach different verdicts

(e.g. patent valid and infringed in Germany, invalid in the UK)

Unitary patent system

• A single EU patent – Covering 26 member states participating in the scheme

• A single EU court to decide:

– infringement – validity – injunctions

• Decisions binding across the EU

Unitary patent (UP) procedure

• Administered by the EPO with the same procedure up to grant

• Positive selection of a UP required at grant stage • Applies to patents pending when UP enters into force • EPO opposition possible • Post-grant renewal fees paid to EPO • Transitional provisions

– if prosecuted in FR or DE, translate into EN – if prosecuted in EN, translate into any official EU language

Non-unitary patent (“classical validation”)

• Can still choose non-unitary patent instead • Normal validation procedure • May also choose non-unitary patent in addition for:

– EU states not participating – Spain – non-EU EPC member/extension states – e.g. Norway/Switzerland

• Other non-EU countries could join the UP if they join the EU

Unified Patent Court

• Decisions of the new court effective across participating EU states: – revocation – infringement – declaration of non-infringement (DNI) – injunctions, including pre-trial

• other remedies include damages • losing party pays reasonable costs

UPC – First Instance

• Central Division – London – chemistry, pharma, biotech, medical devices – Munich – mechanical engineering – Paris (HQ) – all others including electronics

UPC – EP transitional provisions

• UPC will have exclusive jurisdiction over both – Unitary patents (UP) – European patents (EP)

• opt-out from UPC for patentee of an EP (but not UP): – seven year opt-out period – litigation before national court – opt out applies for whole patent term – Can opt back into UPC – Fee of 80 Euros for each direction

• Must opt-out before any third party UPC action (revocation or DNI)

Key considerations for next few years

• Choose EP or National Route – Decision to be made at PCT National Phase Entry

• If EP Route – Choose Unitary Patent or ‘classical’ EP patent?

• Decision to be made shortly before grant (Translation within 1 month!)

– If ‘classical’ - choose to Opt out of Unitary Patent Court? • Decide after grant, but before 3rd party UPC action

• Existing Granted cases – Opt out?

Whether to request unitary patents?

• Cost consideration important: – renewal fee likely to be equivalent to cost of existing renewals fees of Top-4 designated

countries, i.e. DE, FR, GB, NL – that level is likely to put off many patentees. Most cases are only validated in a maximum

of three countries.

• EP classical validation likely to be more cost effective

– also gives flexibility to prune portfolio and reduce costs

• Consider separate National applications in DE and GB only?

Q&A

Thank you for listening

Any questions?

Olivia Murphy: omurphy@haseltinelake.com

Contact

• For more information, please contact:

• Olivia Murphy, European Patent Attorney

• Tel: 00 44 117 910 3200

• Email: omurphy@haseltinelake.com

THANK YOU ANY QUESTIONS?