The Impact of Brexit on Patents in Europe

By Dr. Bertrand Clair

繁體中文

Shortly after the historic Brexit referendum on June 26, 2016, Theresa May, the Prime Minister at the time, said “Brexit means Brexit”. As of January 31, 2020, at midnight, the United Kingdom left the European Union (EU). What does Brexit mean for Patents in Europe?

A withdrawal agreement has been concluded between the UK and the EU, setting a transition period, likely ending on 31 December 2020. During this period, EU legislation, including IP rights, will continue to apply in the UK and on its territory (Part III, Title IV, Articles 54 to 61 of the agreement). Therefore, according to the withdrawal agreement, owners of IP rights which have been registered or granted before the end of the transition period will become owners of a comparable UK right. While owners of pending EU trade mark applications and pending Community Registered Designs which have not been registered by Brexit will have nine months to apply for comparable UK rights and claim priority from the pending EU right, and unregistered design rights and database rights may potentially experience some loss of future protection, none of such actions is necessary for European patents.

Indeed, the European Patent Office (EPO) is not a European Union Agency. The EPO grants European patents based on an international treaty, not a EU treaty. Brexit has no consequence at all on European patents.

However, things are different for Supplementary Protection Certificates (SPCs), which are national rights, available in the EU member states. SPCs extend a patent term, be it obtained by way of a national patent or by way of a European patent, for active ingredients present in pharmaceutical or plant protection products. Upon expiry of the patent, the SPC enters into force and generally lasts for up to 5 years (duration of the SPC is equal to the period which has elapsed between the filing date of the patent application and the date of grant of the first marketing authorisation to market the product, less five years (Article 13, Regulation (EC) No 469/2009)). An extension of 6 months may be available for a medicinal active ingredient, if it has undergone paediatric testing.

Depending on whether the SPC is granted or pending, the impact of Brexit can be summarized as follows:

  • SPCs that have already taken effect will remain in effect after Brexit;
  • SPCs granted but not yet in force will come into force at the end of the associated patent term as normal;
  • a pending application for an SPC will continue to progress (no need to refile).

Where authorisation was granted by the European Medicines Agency, SPC holders may be asked to provide, after 1 January 2021, information on an equivalent UK authorisation in order to be registered on the UKIPO’s Patent Register: the term of any new UK SPC will be calculated based on the earlier of a UK or EU Marketing Authorisation.

From 1 January 2021, SPC applicants will have to apply for an SPC in the UK by submitting an application to the UK Intellectual Property Office (IPO) and provide the same documentation and evidence as currently required, including information on both the UK marketing authorisation and the earliest marketing authorisation for this product in the European Economic Area (EEA), if it predates the UK authorisation.

Brexit may have also consequences on the agreement establishing a Unified Patent Court (UPC), which requires that the parties to the agreement have to be member states of the EU. The intention stated by the UK government is to remove the UK from the jurisdiction of the Court of Justice of the EU, which can be seen as incompatible with the UK’s continued participation post-Brexit.  Also, the UPC agreement provides for the UK to host one of the three branches of the Central Division of the UPC. Should the UK leave the UPC system, as expected by most observers, the workload will also have to be reallocated to one or more of the other participating states. Last but not least, the departure of one of Europe’s largest economies could make the UPC less attractive for litigants.

Despite all these uncertainties, the future of the UPC is currently more bound to a constitutional complaint filed before the German Federal Constitutional Court, which prevents Germany from ratifying the UPC agreement. This case is expected to be decided in the next few months.

Thus, Brexit has no consequence on the currently existing European patent system, but measures have been taken to ensure the continuity of SPCs, including SPCs derived from European patents. More information regarding the UPC will be provided in 2020, as soon as the outcome of the German constitutional complaint is known.