October 2, 2018

As part of its planning for a no deal Brexit, the Government has been publishing Technical Notices across all sectors setting out information to allow businesses and citizens to understand what they would need to do in such a scenario.

On 24 September, the Government published a series of Technical Notices covering various aspects of intellectual property, including patents.

Patents and supplementary protection certificates

The Notice relates to the few areas of UK patent law that come from EU legislation (supported by, or implemented via, UK domestic legislation such as the Patents Act 1977), such as, for example, the supplementary protection certificate, which affects patented pharmaceutical products and agrochemicals, the compulsory licence regime for the UK manufacture of a patented medicine for export to a country with a public health need, and the exceptions from infringement relating to the patenting of biotechnological inventions, and studies and trials using a patented pharmaceutical product.

Essentially, the Government says that there will be no change to the current system, as relevant EU legislation (or its domestic implementation) will be retained in UK law under the EU Withdrawal Act 2018. Therefore, the existing systems will remain in place, operating independently from the EU regime, with all the current conditions and requirements.

Any UK legislation supporting the existing systems will also continue to function as normal. This means that the EU’s legislation on supplementary protection certificates will be kept in UK law. This law, along with the existing supporting provisions in UK patents legislation, will form the UK’s own supplementary protection certificate regime on exit.

Likewise, all other EU legislation relevant to patents and supplementary protection certificates will be kept in UK law. This will ensure UK law continues to work in respect of biotechnology patents and applications, compulsory licensing arrangements, and exceptions from infringement for the testing of pharmaceutical products.

As a result, any existing rights and licences in force in the UK will remain in force after March 2019. For UK, EU and third country businesses there will be no “significant” change to the legal requirements or application processes. If legal proceedings involving rights or licences are underway, they will continue unaffected.

The unitary patent and the Unified Patent Court

The Notice reminds readers that the UPC is not yet in force, with the start date being dependent on ratification of the UPC Agreement by Germany. The Government says that it is unclear whether the UPC and unitary patent will start before 29 March 2019, i.e. the point the UK exits the EU.

Following exit, the Notice says that there are two different scenarios for the UPC:

1. If the UPC does not come into force before exit and is never fully ratified, the domestic legislation to bring it into force will never take effect in the UK. In this scenario, there will be no changes for UK and EU businesses at the point that the UK exits the EU;
2. If the UPC is ratified and comes into force, the Notice states that “there will be actions that UK and EU businesses, organisations and individuals may need to consider.” The Government says that it will “explore” whether it would be possible to remain within the UPC and unitary patent systems in a no deal scenario.

Implications

If the UPC comes into force and the UK needs to withdraw from both the UPC and the unitary patent:

• businesses will obviously no longer be able to use the UPC and unitary patent to protect their inventions within the UK. Existing unitary patents will give rise to equivalent UK patent protection to ensure continued protection in the UK;
• UK businesses will still be able to use the UPC and unitary patent to protect their inventions within the contracting EU countries. However in the UK, businesses will only have the option of protecting their inventions using national patents (including patents available from the non-EU European Patent Office) and UK courts;
• UK businesses will still be open to litigation within the UPC based on actions taken within the contracting EU countries if they infringe existing rights;
• EU businesses will no longer be able to use the UPC and unitary patent to protect their inventions within the UK, but will be able to apply for domestic UK rights, as they can now, via the IPO and the non-EU European Patent Office;
• any existing unitary patents will give rise to patent protection within the UK with no action required by the rights holder; and
• provision will be made regarding the status of any pending cases before the UPC at exit.

In terms of correspondence addresses and confidentiality for UK patents, if there is no deal, there will be no immediate changes to the UK address for service, and privilege rules for patent attorneys will remain unaffected as this is not determined by reference to EU membership.

The Government says that it will be passing technical changes through statutory legislation over the coming months, using powers under the EU Withdrawal Act 2018. It will also be publishing detailed guidance alongside any legislative changes and will “work closely with business representatives, trade associations and stakeholders on the implications.” To access the Technical Notice in full, click here.