• Damon Butcher

Brexit: How Has it Changed Intellectual Property Laws in the UK?

As of the 1st of January 2021, the end of the transition period, the laws regarding intellectual property have changed to accommodate for our departure from the European Union. Due to the EU using their own regulatory body to control IP, the UK have now changed their methods for IP and the way that the IPO works. These changes are already in effect in the UK, Gibraltar and the Channel Islands across all forms of IP, including patents.





Contents:

EUIPO and the UK IPO


With the new changes, UK attorneys will no longer be able to be involved in EUIPO (European Union Intellectual Property Office) applications or proceedings, unless they were already involved before the transition period ended. Uk trademark owners will need to speak with a European Economic Area attorney to represent them with new applications and proceedings with regards to the EUIPO. The UK IPO will no longer be able to certify UK representatives for the EUIPO, and the EUIPO will not accept representatives on the basis of a UK certification.


Changes to IP Rights and Laws


Changes to IP rights within the UK are separated into different sections: Trademarks, Designs, International Trade Marks and Designs, Unregistered Designs, Patents, and more. The most important information will be provided here, along with a brief description of the intellectual property and how it works. It is noteworthy that only an address for service within the UK will be accepted for new applications before the UK IPO.

 

Patents: Patents protect an invention and how it works, stopping others from copying the same systems to generate similar results. Patents are applied for in a complicated process and must show that the system being patented is unique in design and structure, as well as shown that no other person has patented the same and that you are free to operate with the invention made. For more information on patents, see here.


Patents shall remain unchanged due to the EPC being a non-EU entity, and thus our departure from the EU has no effect on any deals with the EPC. Existing European patents continue to cover the UK.


UK patent attorneys may still represent applicants before the EPO.

 

Trade Marks: A trademark is where you have a brand or design that distinguish your company from another. For example, colours, logos, or slogans are all trademarks of a company.

Changes to trademarks are marginal, but noteworthy. A new UK trademark is made for each trademark under the terms of the EU Withdrawal Agreement. These trademarks are comparable to the previous EU ones, but with different rights. These rights will:

  • Be recorded within the UK trademark register

  • Have the same legal status as a trademark applied for and registered in the UK under UK law.

  • They will keep the original EUTM filing date and either the original priority or UK seniority dates.

  • They will be a fully independent UK trademark, to be assigned, licenced, renewed, and, if need be, challenged independently to the original EUTM.

No fee or application is necessary, nor will a certificate of registration be given. If need be, screenshots of the trademarks on the government's website will be sufficient.


All digital and paper forms have been amended to include a new section for claiming the earlier EU filing date in a new application.

 

Design rights: A design is similar to a trademark, but is less specific to a business, and takes into account the appearance, decoration and shapes. Having this protected prevents others from using and copying your works for up to 25 years, provided it is renewed every 5 years.

Designs have the same changes as trademarks, with slight modification for designs.

Designs have been re-registered in the UK by the IPO and will have the following rights:

  • Be recorded within the UK designs register

  • Have the same legal status as a trademark applied for and registered in the UK under UK law.

  • They will keep the original RCD filing date and the original priority date

  • They will be a fully independent UK design, to be assigned, licenced, renewed, and, if need be, challenged independently to the original RCD.

 

International Trade Marks and Designs: International trademarks and designs are exactly that; trademarks and designs that are recognised internationally. This is done through an agreement called the "Madrid Protocol", based in Geneva. It must be based on an existing trademark in a recognised country, and it can be applied for, at the same time as the localised trademark.

UK trademarks are automatically protected in Gibraltar.

Much like the trademarks and designs, a comparable UK trademark has been registered by the UK IPO. A provision also exists for international trademarks.

 

Unregistered Designs: Designs are protected regardless of whether an application is made. How and when they are protected is slightly more complex, and depends on what it is being designed. For more information on unregistered designs in the UK, see here.

A new right called the SUD (Supplementary Unregistered Design) has taken effect and ensures a full range of protection on designs in the UK. This protection does not extend to the EU.

Disclosing this in the EU can reduce the possibility of being granted an SUD in the UK, as it may be the case it is no longer seen as novel.

 

Patents: Patents protect an invention and how it works, stopping others from copying the same systems to generate similar results. Patents are applied for in a complicated process and must show that the system being patented is unique in design and structure, as well as shown that no other person has patented the same and that you are free to operate with the invention made. For more information on patents, see here.


Patents shall remain unchanged due to the EPC being a non-EU entity, and thus our departure from the EU has no effect on any deals with the EPC. Existing European patents continue to cover the UK.


UK patent attorneys may still represent applicants before the EPO.

 

Supplementary Protection Certificates: SCPs protect active ingredients in pharmaceutical and plant protection products. It gives a similar protection to a patent, but is more specific to the active ingredients, thus delaying the use of a patent.


SPCs are national rights, meaning no changes were necessary to the holding, however, the application process was changed due to regulatory changes regarding Northern Ireland. It is now necessary to check whether the SPC will be granted throughout the whole of the UK or just in Great Britain or Northern Ireland.

 

Parallel Trade between the EU and the EEA (European Economic Area): Parallel trade is where goods are non-counterfeit and traded without the permission of the intellectual property's owner. Some countries may allow an exhaustion of intellectual property right, meaning that any resident of that country may be allowed to use the rights.


When exporting from the UK to the EEA, the right holder's consent may be required on IP-protected goods. Parallel imports from the EU to the UK are not affected.


The exhaustion scheme in the UK is currently being reconsidered following a consultation mid 2021. The decision will be made to make the system as beneficial to the economy, public and the UK. An announcement will be made once this decision is made.


These changes mean you may need to contact the owner of any intellectual property you currently export. IP owners withhold the right to refuse export to the EEA.

 

Copyright: Prevents work from being used or distributed after creation of original literature, software, recordings and many others. This protection is automatically given after creation.


The UK remain participating in the International Treaties of Copyright, along with the EU, meaning any works created in the UK are still protected throughout the EU. Some cross-border copyright arrangements unique to some EU members will no longer affect holders in the UK, for example Germany have slightly different laws.


For these reasons, the effects on copyright will be dependent on your scenario.

 

Geographic Indications: This occurs when a location holds the rights to create something, such as Cornish pasties or scotch whisky. These laws are complicated, so making sure your copyright is still held is imperative.

The IPO has done work with Defra to make new schemes compatible with the wider IP framework, ensuring the existing relationship between trademarks and Gls remains.

 

Protection of IP rights at the border: UK protection in the EU is no longer recognised.

Businesses that wish to protect their IP in the EU, as well as the UK, must now hold both an EU and UK right, and a new application process has been made by HMRC to protect IP rights at the border.


Summary


The primary takeaway is that while we are no longer covered by the EUIPO, equivalent UK variants have been created. Any trade with non-EU entities, such as the EPC, have not been changed and remain as they were prior.


The full list of changes is available here.


Inovasi helps companies to innovate with innovation incentives: R&D, Tax Credits, The Patent Box Scheme, and Funding. Inovasi aims to save you time, so you can focus on the core of your business, we offer expert advice, you can rest easy knowing your claim has been strictly adhered to HMRC legislation, reducing the chance of an inquiry, maximise all aspects of your innovation process, experienced, up to date on the latest guidance and changes related to R&D.


To find out more about the Patent Box scheme please visit www.inovasi.co.uk or get in touch with Inovasi at hello@inovasi.co.uk