On 24 September 2018 the UK Government published a series of Technical Notices addressing various scenarios in which the UK leaves the European Union without an agreement, the so-called “no deal” or “hard” Brexit scenario. The Technical Notice dealing with Patents/SPCs, the unitary patent and the Unified Patent Court is here.
The Government has re-emphasised its commitment to seeking a positive deal with the EU ahead of the potential Brexit date of 29 March 2019, but has outlined contingency plans in the event that no deal is reached. In general, these will preserve the status quo in the UK for patents and SPCs.
In a “no deal” scenario, there is no change in the way UK patents are obtained and enforced. Patent protection in the UK will continue to be obtainable based on a European patent application filed with the European Patent Office (via an EP(UK) patent), because the European Patent Convention which establishes the European Patent office is not based on any EU legislation. All EP(UK) patent applications, patents and associated licences will also remain in force (but parties to licences should review any provisions which refer to the EU). Separately, as is currently the case, it will also remain possible to protect inventions by way of UK national patents granted by the UK Intellectual Property Office. Thus, there will be no change for existing patent-holders / patent Applicants.
In addition, all EU legislation relevant to patents will be kept in UK law. This means that the legal provisions derived from EU law relating to patenting of biotechnological inventions and exceptions from infringement for carrying out studies, trials and tests on patented pharmaceutical products will remain in force.
An SPC is a national right governed entirely by EU law providing an additional period of protection for patented pharmaceutical products and agrochemicals after patent expiry. In the event of “no deal”, a UK SPC will remain a valid UK IP right. All existing SPC provisions will be retained in UK law and all existing rights and licences in force in the UK will remain in the force. Pending UK SPC applications will also continue to be assessed on current criteria and it will be possible to continue to file new applications.
The UK Government has also commented on the effect of “no deal” on participation of the UK in the unitary patent and Unified Patent Court (UPC). These are intended to provide for a single patent, covering a number of European states, which can be enforced/challenged in a single court.
The UK has previously ratified the Unified Patent Court agreement but the UPC is not yet in force as Germany is yet to ratify. It is unclear whether the UPC and unitary patent will commence prior to 29 March 2019.
The UK Government states that in the event of a “no deal” Brexit it would explore remaining within the Unified Patent Court and unitary patent systems. In the event the UK needed to withdraw from one or both systems, it is indicated that any existing unitary patents would then give rise to equivalent UK protection. UK businesses would also remain able to use the UPC and unitary patent for protection within contracting EU countries.
However, UK and EU/third country businesses would need to protect inventions in the UK by use of domestic UK rights (including via an EP(UK) patent application or patent), and the UK courts.
Please contact your usual J A Kemp adviser if you have any general queries or would like to assess specific implications for your business.
25 September 2018