Brexit and What It Means For IP Rights

By Shane Percival

Before I went to law school, I was an engineer at a software company. At one point while working at this company, I was required to live at a couple of flats in the Mayfair & Kensington districts in London for nearly a year while providing on-site support services at our customers throughout Europe. When I wasn’t traveling to client sites, I worked at the company’s office in the City of London. Having never previously visited England, I can remember being taken aback when I was first informed by one of my colleagues in London that “we’re not European, we’re British.” So, Brexit was not much of a surprise to me.

Brexit officially occurred on January 31st, 2020, with an 11-month transition period to allow companies to get the correct IP agreements in place. At the end of this year (2020), Brexit legal changes for IP will occur. I believe that the uncertainty and worry around potential IP law complications both during and after Brexit have been a much bigger deal than the actual realities of the Brexit agreement, at least as far as IP goes. As shown below, what both governments have agreed to is pretty simple in order to ensure your IP is protected.

Trademarks & Patents

For registered trademarks, companies should note that registered European trademarks will be automatically transitioned to the UK system by the UK. This will create a new UK trademark in the UK registry. No additional steps are needed if your trademark registration is current and you have no pending EU trademark applications. Companies will, however, need to be on the lookout for their forthcoming UK trademark registration. Currently, there is no official date when the registrations will be issued. Companies should continue to monitor the UK’s trademark office website as we move closer to December 31, 2020 so they are aware when their new UK registrations are, or will become, available for review. For pending trademark applications, companies should be aware they need to convert their European trademark application to a UK trademark application by September 30th, 2021. Alternatively, you can choose not to convert the application and protect your IP only in the remaining EU countries. By 2021, companies and individuals desiring protection in Great Britain and the European Union will need to file two trademark applications, one in the EU and one in the UK. For applications filed via the Madrid Protocol, there is still some uncertainty as to how protection for these applications will work going forward, so attention there will be needed as well.

For patents issued by the European Patent Office (EPO), nothing will happen at the end of 2020 and nothing will change in the future. This is because the EPO is a separate entity from the EU and Britain will stay on as a member of the EPO. So, if you have a patent application pending at the EPO, it will stay there. If you have a European patent that was issued, there are no steps you need to take to ensure this patent continues to cover your invention for the same geographic area as prior to Brexit. Furthermore, UK patent practitioners will still file European patents with the EPO and have protection in the UK as well as other European countries.

Copyrights

Brexit hasn’t changed anything for copyrights, either. There are agreements in place, separate from Brexit, which cover copyright protection ensures that copyrights can still be enforceable in the EU and the UK.

Agreements

Do not forget about your IP agreements. You will need to check that your agreements, such as a licensing agreement or any agreement that deals with intellectual property, are applicable in the UK if they now only refer to the European Union. Another point to be aware of is that if your agreement states that it is enforceable in the EU, you may need to amend the agreement to state that the contract is binding in both the EU and UK, which may require both parties to sign the agreement once again.

Related: Protecting Your Intellectual Property: Operating, Employment, and Founders’ Agreements

A Seamless Transition

Everyone is aware that Brexit is happening so it’s critical Companies conduct due diligence on their IP assets and agreements to determine how this transition will (or will not) affect your ability to enforce these assets and agreements in the UK and the EU moving forward. Luckily, both governments are completing the transition for IP as seamlessly as possible for all parties. I expect them to continue to do so for the items that are still outstanding.

This article should be used as a guideline for what you should be aware of and your IP attorney should be contacted to ensure that all of your IP boxes are checked to ensure a seamless transition.

Related: The Right Team

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