Welcome to the latest edition of the Downing IP newsletter.
As you know, I like to keep you up to date with things that are happening in the UK and Europe around the subject of intellectual property. Normally, that’s a fairly straightforward and relaxed task, as things don’t change that quickly in IP. For example, the Trade Marks Act 1938 was criticised by a judge for being of “fuliginous obscurity” as early as 1939, but it took until 1984 for the Government to issue a White Paper saying how the law should be rewritten. The White Paper then sat languishing for ten years before reappearing as the Trade Marks Act 1994, mainly due to the excitement around the imminent arrival of the EU trade marks registry, a project that was started in the early 1970s and which came to fruition in 1996.
You get the picture. Basically, we may have come a long way, but that’s mainly because we started in 1624.
So it feels odd to be writing a newsletter in the knowledge that by the time you read this, it might be out of date. But that’s the current state of UK politics, where our leaders look back wistfully at a time when Harold Wilson could say “A week is a long time in politics”. Brexit is presenting a challenge to our system of politics and government that it has not faced in a long time. That being so, there are a few things that are beginning to crystallise.
First, in relation to patents, we know exactly what is going to change – nothing! I know I’ve said this before, but it’s worth repeating; it will be business as usual. The European Patent Office is legally and administratively separate from the EU, we will remain full members, and Downing IP will carry on arguing with the examiners at the EPO just a vigorously and pedantically as we always have. Indeed, the only impact of Brexit on the European Patent system has been to throw a spanner into the works of the EU’s proposed Unified Patent Court, thus preventing the first major institutional change for the patent system since 1978. Opinions differ as to whether that is a good or a bad thing…
For trade marks, things are harder as the EU Intellectual Property Office (which only deals with trade marks and designs, despite its name) is indeed an EU body. So trade marks and designs registered at that office will cease to apply to the UK. Regardless of whether we leave with a deal or not, the UK will be creating copies of each and every EU registration for their owners; those copies will then exist separately to their EU counterparts as UK-only rights. They will need to be renewed independently of the EU registrations. Of course, in any system the devil lies in the detail, so if you’re managing an IP portfolio on behalf of others then you need to look out for and take care of a few specific edge cases:
Applications that are pending on the day we leave need care, especially EU design filings. You might want to ensure that any EU design filings with a convention deadline near to the day we leave are filed at least a week before.
- Oppositions in the EUIPO that are still pending will need to be reviewed. If they are based on a prior UK right only, then they will be deemed moot and the file closed (with no order for costs).
- EU registrations that are renewed after we leave will also need to be renewed in the UK, if you want to keep the UK right
- EU renewals that were paid before we leave, but for which the deadline was after we leave, will also need to be paid in the UK after we leave.
- UK firms will not be able to conduct proceedings before the EUIPO, so we will be transferring all our cases to our Dublin office (eventually).
I’d just like to reinforce the point regarding renewals; these fees are typically paid in advance, so there will be some cases where the fee has already been paid to the EUIPO but the due date for payment falls after we leave. A renewal fee will need to be paid to the UKIPO as well, for those. Fortunately, the UKIPO has confirmed that the usual late payment penalty (if the fee is paid up to six months after the due date) will be waived for these cases. We will be checking our records for such cases, so if we are looking after your EU registration then we will let you know.
One that isn’t crystallising at all well is the date on which we leave… at the moment, depending on the next "meaningful" vote, that date is likely to be either 12th April or 22nd May. If we sign Mrs May’s deal then the status quo will be maintained for intellectual property until the end of 2020. Or we might extend that date. Your guess is as good as mine, here… I’d be interested to hear what you think will happen!