What impact will Brexit have on intellectual property rights – Patents?

In the fifth and final part of our Brexit series, we look at how patent law will be impacted post-Brexit.
The Department for Business, Energy and Industrial Strategy recently published guidance titled  “Patents if there’s no Brexit deal” (available here). With a Brexit deal still uncertain, we consider how the legal landscape might look in relation to patents, once the UK has left the European Union in such a scenario.

Generally, Brexit should not have a significant impact on patent protection.  This is due to the current European Patent Convention, which protects patents on a European level, being a non-EU Convention (despite its name!) In fact, many contracting states of this Convention are not EU Member States. Therefore, post-Brexit, UK businesses will retain the right to make an application to the European Patent Office to register a patent and existing European patents will remain valid and enforceable.

However, the Department for Business Energy and Industrial Strategy have identified certain areas worthy of specific comment, which we will explore in this update.

Supplementary Protection Certificates (SPCs)

The SPC system offers protection to patented pharmaceutical and plant protection products by providing a further period of protection (up to a maximum of 5 and a half years) once the patent has expired.  The SPC regime stems from EU law.

The UK government has stated that, once the UK exits the EU, the EU legislation on SPCs will remain part of UK law (by virtue of the EU Withdrawal Act 2018) and post Brexit, the UK will have its own SPC regime.  Given that all SPC legislation will continue to remain in force and there will be no change to the application process (all applications for SPCs will be judged identically and it will still be possible to lodge new applications for SPCs), Brexit is likely to have a minimal impact in this area.

Biotechnological inventions

Currently, the rules governing the patenting of biotechnological inventions are part of EU law. However, the UK government has indicated that these rules will continue to apply and that patent examiners will judge applications based on the current law.

Compulsory licenses

Where a patented medicine is manufactured in the UK, by virtue of EU law, compulsory licences can be granted so that the medicine can be sent to developing countries with public health needs.  The UK government has confirmed that, even post-Brexit, it will be possible for compulsory licenses to be granted in these circumstances in order to meet health needs.

Pharmaceutical product testing

EU law currently provides for a specific exception to patent infringement, allowing various studies and trials to be done using a patented pharmaceutical product.  However, the UK government has confirmed that this this exception will continue to apply after the UK has left the EU.

Unitary Patent and Unified Patent Court (UPC)

The UPC is not currently in existence but what is envisaged is a single court which operates at an EU level offering businesses a mechanism for patent enforcement if a patent comes within the UPC’s remit (i.e. European patents and unitary patents).  The unitary patent is a new type of patent, essentially a single patent covering a number of European states, which will come into force when the UPC becomes operational.

Although the UPC Agreement has been ratified by the UK, it still requires to be ratified by Germany.  There is a possibility that the UPC Agreement may never be completely ratified and if that is the case, the implementing UK legislation will not be brought into force.  In such circumstances, there would be no UPC, irrespective of Brexit.

However, if all states ratify the agreement, how would Brexit affect the UK’s participation in the UPC?

The UK government has indicated its wish to remain in the UPC post-Brexit and has stated that it will explore whether remaining within the UPC and the unitary patent systems will be possible. However, since the wording of the UPC agreement only permits EU member states to take part in the UPC, this is an obstacle to the UK’s participation.  An amendment to the UPC agreement could resolve this problem, although this would require all UPC participants to sign and ratify a new amended agreement – this could be particularly time consuming and might significantly delay the creation of the UPC.

There are various implications should the UPC come into force and the UK is required to withdraw:

  • businesses in the UK will be unable to take advantage of the UPC and the unitary patent systems to protect their inventions in the UK.
  • existing unitary patents will, however, give risk to equivalent patent protection in the UK.
  • UK businesses will be able to use the UPC and unitary patent to protect their invention within contracting EU countries.
  • UK businesses will be required to seek patent protection from the European Patent Office or the UK Intellectual Property Office and the UK courts.
  • UK businesses could still find themselves subject to litigation in the UPC if they infringe patent rights within the contracting EU countries.
  • EU businesses will not be able to use the UPC and the unitary patent to protect their inventions in the UK but will be able to apply for patent rights in the UK via the UK IPO and the European Patent Office.

To conclude, there will be no significant change to patent law post-Brexit, in terms of the legal requirements or the application procedure. It has been confirmed that, in the event of a no deal Brexit, the EU Withdrawal Act will provide for the relevant EU laws to continue to be applicable in the UK.  Further, any legislation which is ancillary to the current systems will continue to operate as before, independently from the EU system.

It remains to be seen whether Brexit will prevent the UK from participating in the Unified Patent Court and we await further developments in this regard.

This article was co-written by Charlotte Fleming.

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