Intellectual property (IP) rights are changing due to EU exit

Quick facts

• The Trade Cooperation Agreement (TCA) provides that intellectual property (IP) rights will continue to be protected to at least the standards required by international agreements
• The TCA also includes mechanisms for co-operation and exchange of information on IP issues between EU and UK
• Some relevant EU IP rights were replicated in the UK legal system and amended as necessary
• The UK is part of non-EU international agreements such as the Berne Convention and the European Patent Convention which apply in UK legal system’s protection of patents and copyright
• For all new applications for a patent, a trade mark or a design at the UK IPO, you must have an address for service in the UK, Gibraltar or the Channel Islands. The EUIPO requires an EEA address for EU trade mark or design registrations (yours or your representative).

What changes are being made to each area?

Rights in Trade Secrets and Confidential Information

There is no change in the area of trade secrets and confidential information as the EU Trade Secrets Directive (Directive (EU) 2016/943) was implemented in the UK by the Trade Secrets Regulations 2018 (SI 2018/597), which will remain in effect (as amended).

Patents

In regards to patents, they will for the majority continue as before. Patents covering the UK will continue to be granted both by the UK Intellectual Property Office (UKIPO) and the European Patent Office (EPO). Neither the UKIPO, nor the EPO, is an EU institution and their operation is unaffected by the UK’s exit from the European Union.

Applications for patents can be filed directly with the UKIPO or EPO, or can be made pursuant to an international patent application filed under the Patent Cooperation Treaty.

Supplementary Protection Certificates

The additional protection afforded to patentees by Supplementary Protection Certificates (SPCs) has been part of UK law through the EU Regulations. However, by virtue of The Patents (Amendment) (EU Exit) Regulations 2019 all EU SPC law was transposed into UK national law.
The UK’s SPC regime remains largely unchanged, and many of the processes for applying for an SPC remain the same. Applicants for new SPC applications will require (as before), a UK patent granted by the EPO or the UKIPO, and a marketing authorisation (MA) valid in the UK.

Design rights

EU design rights (both Registered and Unregistered Community Design rights) do not cover the UK any more, but an equivalent UK right called a “re-registered design right” or a “UK continuing unregistered design right” have been automatically created. Each of these UK rights will have the same legal status as if you had applied for and registered it under UK law. They will keep the original filing date and the original priority or UK seniority dates.

Further, a new UK unregistered design right called a “supplementary unregistered design right” (SUD) which provides the same protection as the Unregistered Community Design Right, but covering only the UK, has been made available. The SUD is established by first disclosure in the UK or another qualifying country. First disclosure in the EU will not establish a SUD right in the UK and it could destroy the novelty of the design should you later seek to establish in the UK.

Copyright & Database Rights

Most UK copyright works (such as books, films and music) are still protected in the EU and the UK, and this is because of the UK’s continued participation in the international treaties on copyright. For the same reason, EU copyright works will continue to be protected in the UK. Also certain EU laws (such as the Software Directive and the InfoSoc Directive), have already been implemented into UK legal system before Brexit.

Certain cross-border copyright arrangements that are unique to EU member states no longer apply to the UK. These include cross-border portability of online content services, copyright clearance for satellite broadcasts, and reciprocal protection for database rights. The effect of this change on UK copyright works and related services may vary, and will depend on domestic legislation in each EU state as well as private contractual relationships.

UK citizens, residents, and businesses are not eligible to receive or hold database rights in the EEA for databases created as of 1 January 2021. As such, owners of databases created on or after 1 January 2021 should consider whether they can rely on alternative means of protection in the EEA – for example licensing agreements or copyright, where applicable. However, under the terms of the Withdrawal Agreement, database rights that exist in the UK or EEA before 1 January 2021 (whether held by UK or EEA persons or businesses) will continue to exist in the UK and EEA for the rest of their duration.

Trademarks

EU Trade Marks (EUTMs) no longer have effect in the UK. The UK government has automatically created a “comparable UK trade mark” for every registered EUTM, at no charge. For new filings, however, companies are advised to dual-file in the EU and UK if protection is needed both in the UK and the EU. Each of the comparable UK rights will have the same legal status as if you had applied for and registered it under UK law. They will keep the original EUTM filing date and the original priority or UK seniority dates. However, this does not apply to pending EUTM applications.

Legal representation

The Withdrawal Agreement does not grant rights of representation before the EU Intellectual Property Office or before the Court of Justice of the European Union (other than in ongoing proceedings). Therefore, since 1 January 2021, UK attorneys are unable to represent clients on new applications or new proceedings at the EU Intellectual Property Office (EUIPO), unless they have an EU established presence. UK trade mark owners will need to appoint an EEA attorney to represent them on new applications and proceedings before the EUIPO or check if the UK attorneys have a presence in the EU. Businesses that want to protect their IP rights in the EU and in the UK via customs authorities will need to hold two Applications for Action (AFA) – one in the EU and one in the UK. They will also need to check the EU EUROPA website for guidance on protecting IP rights in one or more EU member states.

Who can I speak to if I want to know more?

You can contact Innovate UK EDGE via email at contact@innovateukedge.ukri.org or by phone on 0300 123 3144.

Important information

Whilst we make every endeavour to provide full and accurate reports we are unable to guarantee the absolute accuracy of information provided to you. We therefore exclude liability for claims by you for damages or losses resulting from the provision or otherwise of information to you.