Brexit and what it means for your IP

• The European Patent System is not affected by Brexit. The UK is, and remains, a member of the European Patent Convention (EPC), as the EPC is unrelated to the EU.
• UK-national European Patent Attorneys are still able to act before the EPO after Brexit.
• Patents continue to be enforced against infringers in the national courts.

• UK-based companies can continue to file and own RCDs.
• Existing RCDs no longer extend to the UK, but all those registered on 31 December 2020 have automatically been “cloned” to create equivalent UK rights.
• Now that the transition period has ended, any new RCD filings will no longer extend to the UK.
• For new designs in the UK, a separate UK Design Registration will need to be filed.

• Designs that were protected in the UK as EU Unregistered Design Rights on 31 December 2020 continue to be protected in the UK for the remainder of their three-year term as Continuing Unregistered Designs (CUD), which were automatically established on 1 January 2021.
• A new “EU equivalent” UK Supplementary Unregistered Design (SUD) right has also been introduced to mirror the protection provided by EU Unregistered Design Rights.
• SUD rights are established by first disclosure in the UK, but not first disclosure in the EU.

• Following 1 January 2021, only a UK address for service will be accepted for new UK patent, design and trade mark applications.
• In particular, it will no longer be possible to register an European Economic Area (EEA) address as an address for service in respect of granted European patents designating the UK – only a UK address for service will be accepted.
• Registering a UK address for service is advisable because without such an address the UK Intellectual Property Office will enter the first-named proprietor as address for service on the UK Register and send any official correspondence to them.. This could lead to important correspondence being overlooked, misdirected or misunderstood.
• It is not necessary to have a UK address for service to pay renewal fees. For all other actions, such as recordals of assignments, licences and changes of name/address, a UK address for service is required.

Mathys & Squire is proud to employ people of different nationalities, with many coming from countries within the EU. We have taken steps to ensure that the firm has a number of locations inside the ‘post-Brexit EU’ (i.e. without the UK). This has placed us in a strong position to be able to handle both UK trade marks and designs, as well as EU Trade Mark Registrations and Registered Community Designs, and we have been working with our clients on cost-effective strategies for doing so.

A downloadable PDF with this information is also available here. If you have any questions, then please contact your usual Mathys & Squire adviser or for more information on this topic, please contact brexit@mathys-squire.com.

*Plus two extensions and two validation states.

英国退欧对知识产权的影响        イギリスのEU離脱が知的財産権に及ぼす影響