The European Union (EU) is an economic and political partnership involving 28 European countries. It began after World War II, in large part because many Europeans felt that countries which trade and work closely with each other are less likely to go to war and attempt to invade their partner states. Now, the EU is about to lose an important member of this single market, which has allowed products and people to flow freely across national borders for many years. This is because last month, the United Kingdom (UK) held a voter referendum, and the majority of voters (52% to 48%) decided that the UK should leave the EU partnership.
There has been a lot of discussion regarding the expected fallout from the UK’s historic vote to leave the EU. One area of uncertainly relates to the effect its exit will have on the current European patent system and processes available to protect technology in the UK. In this blog post and podcast episode, Cloudigy Law’s Jennifer Atkins and Antigone Peyton go over presently available European and UK patent protection options and the highly anticipated Unitary Patent System, as well as what effect Brexit might have upon them.
The European Patent System
Currently, companies seeking UK patent protection can use the European Patent Convention (EPC) option. This patent process allows a company to file a single European Patent Application with the European Patent Office (EPO). The EPO will examine the application, and if the technology is found to be patentable, then a European Patent will be granted.
The EPO patent must then be validated in any country (such as the UK) that is a signatory to the EPC for the patent to be enforceable in that country. Validation involves a variety of requirements which differ from country to country. For some, a translation to one of the approved languages (such as French, Spanish, etc.) and payment of a national stage acceptance fee is required, among other things. Then there are the maintenance fees for keeping a patent alive in each country once it has been granted. Parts of this process are very expensive and cumbersome for patent owners, which is why the new Unitary Patent option described below is seen as an attractive alternative.
The European Patent is independent of the EU. The UK is a member of the European Patent Convention and Brexit does not affect its membership in this convention. As such, Brexit will not change the current European Patent system or the ability to use the EPO as the central filing and examination clearing center for a patent that is ultimately secured in the UK (after the national stage fee is paid).
United Kingdom Patent Applications
An applicant can also file a patent application directly with the UK’s Intellectual Property Office (IPO). The IPO will examine a UK patent application, and if they agree that its subject matter is patentable, then a UK patent will be issued. This is the option that companies usually pursue when they wish to file for patent protection in only one or a few EU countries. Generally, the UK examination process is faster than the EPO examination process, which is then followed by a national stage filing in the UK. Again, as is the case with the current European Patent system and EPO, Brexit will not affect patents that were obtained directly through the UK’s IPO.
Moreover, the UK is also a signatory to the independent Paris Convention Treaty (PCT), which provides important intellectual property rights and protections to all member countries. For instance, a patent application filed in one member country is entitled to the filing date benefits of a corresponding patent application previously filed in another member country, as long as the two applications are not filed more than 12 months apart. Currently, the Paris Convention Treaty has 176 member countries, including the United States. Patent applications filed with the UK’s IPO receive the PCT filing date benefit (where applicable). Brexit will not affect the UK’s participation in the PCT nor the benefits the UK derives from it.
The Future of the Unitary Patent System and Unified Patent Court
Brexit will, however, impact the Unitary Patent System and Unified Patent Court. For years, the EU has been working on a system that would lead to a single patent that is enforceable across all EU member countries. In 2012, the European Parliament passed regulations to implement unitary patent protection across 24 European countries (including the UK) that helped develop and launch the program. As it currently stands, the Unitary Patent System is a EU-only system, even though it is not part of the official EU framework. It was expected to go into effect in 2017 or 2018, once the requisite member country ratification requirements are met. However, as a result of Brexit, it is highly likely that the Unitary Patent System will be put on hold a while longer until the UK and the rest of the EU determine the terms of their new relationship with respect to intellectual property, cross border trade, immigration, and other similarly important matters.
Additionally, the EU has been working on a judicial body that would have the power to enforce Unitary Patents—the Unified Patent Court. The idea behind this court system is that a patent could be enforced in several European countries without requiring a party to file separate enforcement actions in each country in which it intends to enforce its right.
At this point in time, 11 member states have ratified the UPC agreement, including France. The clause for ratification states that the 3 countries with the most patent validations in the year prior to the ratification triggering conversion to this new system would have to reach a consensus in order for the new system to take effect. Presently, the largest member states in terms of the number of patent validations are Germany, France, and the UK. However, once the UK officially leaves the EU, Italy will take up the third slot.
The UK could still participate in the UPC while it negotiates its exit, but only if it undertakes certain necessary ratifications. The more likely scenario is for it to hold off on taking any action relating to the Unified Patent System and Unitary Patent Court while it attempts to juggle the terms of its impending exit from the EU.
Another interesting aspect of the Unified Patent Court is the fact that London is currently the seat of an important division of the new central enforcement venue — the pharmaceutical court. It seems unlikely that the other member states would allow such an important court to reside outside of the EU, so the parties will have to rethink the terms of the UK’s involvement in this new court system. Likewise, it is possible that UK firms will not be allowed to participate and represent clients before the Unified Patent Court once all of the post-Brexit issues are resolved.
The Takeaways Regarding UK Patent Protection
So what does Brexit mean for the future of European patents and the existing patent protection and filing systems? Should businesses start investing in gold instead of UK patents? For the time being, no. This is because Brexit will not affect the existing patent processing and protection systems, in contrast to the EU trademark system. But definitely stay tuned — as the UK invokes Article 50 and begins the process of negotiating its exit from the EU, things will become very interesting as the remaining EU members continue their efforts to consolidate and coordinate patent protection options.
Photo credit: Mike Licht