By Bruce Lilling
On its face it would seem Brexit is political and governmental, but it does have an impact on technology companies, including biomed firms.
Patents involve inventions and technology, and are not affected by Brexit. Trademarks involve the names, symbols and logos by which goods and services are marketed and sold, and they are profoundly affected by Brexit.
Considering patents first, The European Patent predates the European Union and began in the 70’s. Since it is not a product of the EU, England’s departure from the EU does not change the effect of European Patents in England. Therefore, any European Patent in force and registered in England remains in full force, as long as annual fees are paid. Once pending European patent applications are allowed, issuing European Patents will have force in England if they are timely registered in England, as has been the case for the last 40+ years. New European patent applications will be able to be registered in England once they issue. Nothing has changed with patents and, if you file for an European patent, you do not need a separate additional application for England.
The story is different for Trademarks and Industrial Designs. They are a product of the EU and, therefore, England’s departure from the EU does profoundly affect trademark practice and England is no longer part of the EU Trademark and Design systems.
For existing, already issued European Trademark registrations [known as Community Trademarks], effective as of 1 January 2021, all European registered trademarks and designs will each have a UK equivalent “clone” created automatically by the UK Office with the existing European registration continuing (minus only, of course, its UK national coverage) from then onwards.
For applications filed on or after 1 January 2021, an European trademark or design application will not include England. If you want protection in England from 2021, then you need a separate British application in addition to your EU application.
If England is an important market, then my strong suggestion is to consult a British patent/trademark attorney to make sure you are properly protected. Do not assume and take chances.
Bruce Lilling is a semi- retired USA patent attorney with close to half a century experience in all aspects of IP law – and not just applications – is available for consultation and to help technology companies create and manage strategic programs to protect their technology, inventions and trademarks. For BioCity members he offers a free initial 30-minute consultation.
bruceelilling AT gmail.com