- IP rights (UK patents)
There are two systems by which a patent can be granted for the UK:
- National application through the UK Intellectual Property Office (UKIPO); and
- Granted European Patent Office (EPO) patent which designated UK (no validation is required).
For both types of granted patents, issues of infringement and validity are matters for the courts of the UK (for EPO patents post-grant 3rd party oppositions filed within nine months from grant & centralised amendments or revocation by the owner).
Both systems are governed by national and international law – residing outside of EU law.
Amendments to UK national legislation have been enacted by The Patents (Amendment) (EU Exit) Regulations 2019.
Also, the EU Biotechnology Directive (no. 98/44) and the IP Enforcement Directive (no. 2004/48) – have been adopted into UK’s national law.
The UK will remain a member of the Paris Convention as adopted in 1883, which underpins the priority filing system around the globe. Further detailed information on matters of Intellectual Property can be identified in the UK and EU Agreement: http://brexitlegalguide.co.uk/intellectual-property-eu-uk-agreement/
- Address for Service in the UK
An address for service is a “fixed” correspondence address given to the UK Intellectual Property Office (UKPIO) by proprietors of IP rights. Usually, the IP attorney of the applicant/proprietor is listed as the address for service.
Prior to Brexit, it was possible to provide an address for service in the UK, an EU/EEA state or the Channel Islands (see the Patents Rules 2007, rules 103-104). The ‘Recast Brussels Regulation’ (1215/2012) governs issues of service, jurisdiction and enforcement of judgments between EU member states, and by extension (through the Lugano Convention), with EEA states.
From 1 January 2021, the rules will not permit the provision of an address for service outside the UK, the Channel Islands or Gibraltar in respect of a UK patent (GB or EP(UK)) or an application in the UK IPO.
The provision of an address for service in the other EU or EEA countries would not be allowed.
The legislative amendments are contained in The Patents, Trade Marks and Designs (Address for Service) (Amendment) (EU Exit) Rules 2020 (SI 2020/1317). The UK IPO’s guidance on address for service for intellectual property rights from 1 January 2021 is available here.
In July 2020, the UK Government withdrew its ratification of the 2013 Agreement on a Unified Patent Court.
Accordingly, if and when the proposed Unified Patent Court and unitary patent system does become reality, the UK will not be a participant – unless – a prior agreement is reached.
- IP Litigation in the UK
Intellectual property being territorial in nature, the courts in the UK will continue to have jurisdiction on issues of infringement and validity of IP rights for the UK after 31 December 2020.
International treaty arrangements generally reserve exclusive jurisdiction to the courts of the country for which an IP right has been registered and existing litigation practices within the EU and internationally reflect this.
The main difference for litigation in the UK after 31 December 2020 is that the UK will no longer be within the EU/EEA regime governing service, jurisdiction and enforcement of judgments.
For the courts of the UK and the courts of the EU27 states, this is governed by the ‘Brussels regime’ (Regulation 12/15/2012); while for the courts of the UK and the courts of Iceland, Liechtenstein and Norway (the further “EEA countries”) this is governed by the ‘Lugano regime’ (Lugano Convention 2007).
For litigation commenced in the UK on or before 31 December 2020, but not yet concluded, the Withdrawal Agreement (articles 67 & 69) (and a withdrawal agreement concluded with the EEA countries), the Brussels & Lugano regimes – will continue to apply.
From 1 January 2021, the Brussels & Lugano regimes will be replaced: in the UK, by the common law; and in each of the remaining EU27/EEA countries by their applicable national law.
In the UK, the common law regime presently governs issues of service (see Point II. Above), jurisdiction and enforcement as between the courts in the UK and the courts in many other countries including, for example, the USA.
For disputes arising in the context of an agreement under the 2005 Hague Convention (i.e. the courts of contracting states must uphold exclusive jurisdiction clauses, and recognise & enforce judgments given by courts in other contracting states that are designated by such clauses – UK, EU, Singapore, Mexico, and Montenegro), the present arrangements would continue to apply.
Replacement of the Brussels & Lugano regimes remains to be agreed between the UK and the EU.