Coronavirus - UK IPO, EPO and EU IPO extensions and support
A simple overview of the current status from IPOs. Last updated 31st March 2020.
Wynne-Jones IP is uniquely positioned among UK patent and trade mark attorneys to continue to handle EU work by virtue of our membership of the AIPEX European Alliance. Importantly, we can still file and prosecute “Pan-European” IP applications for European Patents, European Union Trade Marks and Registered Community Designs, and subsequently enforce the resulting rights.
AIPEX, was founded in 2010, and is registered in Munich, Germany. AIPEX has partner members in key industrial territories of Europe: Wynne-Jones IP in the UK, AOMB in The Netherlands, Germain & Maureau in France, Prinz & Partner in Germany, Herrero & Asociados in Spain, SBGK in Hungary and AOMB Polska in Poland.
AIPEX attorneys work together as a team of over 200 professionals to combine national and local knowledge as well as professional capacity and experience in all the necessary technical and legal specialties. Through AIPEX, Wynne-Jones IP is able to provide an agile and comprehensive response to any changes in the IP landscape in Europe, whether Brexit or beyond.
Equally importantly, there is no reason to be concerned about the immediate impact of the Brexit decision on intellectual property rights. This is because:
European patents are administered by the European Patent Office according to the European Patent Convention (EPC). European patents cover all member states to the EPC, which includes the UK, and not just EU states. Also, membership of the EPC is not dependent on membership of the EU - there are presently several member states of the EPC which are not members of the EU, including Norway and Switzerland.
Accordingly, the UK’s relationship with the current European patent system is unaffected by the Brexit decision.
However, it is expected that the proposed so-called “unitary patent”, which has not yet come into force, will be affected by the Brexit decision. The unitary patent will be administered by the European Patent Office as part of the European patent application process. It is intended to provide applicants with the option of designating or protecting their invention in all EU states in one hit, rather than the current process of requiring applicants to make a European patent effective in EU states, separately.
The birth of the unitary patent is dependent on the UK (in addition to other EU states) ratifying the Unitary Patent Agreement and, given that the UK is now no longer a member of the EU, it is unclear when, or indeed if, the unitary patent will come into effect. Assuming it does, however, the unitary patent will be available to all EU states that have ratified the Unitary Patent Agreement and, while it may no longer be possible to designate or cover the UK with the proposed unitary patent, it will still be possible for applicants to select a unitary patent, and separately cover the UK as part of the current European patent system. The selection of the unitary patent option and coverage in other countries such as the UK occurs at the end of the EP patent prosecution process. Wynne-Jones IP will be able to handle all of these actions, as well as continuing to offer its high quality EP patent prosecution, opposition and appeal services.
While we expect that registered EU trade marks will (eventually) no-longer cover the UK, we can continue to file and prosecute EU trade mark applications, and subsequently enforce EU trade mark registrations, in view of our unique AIPEX alliance. Consequently, we will be pleased to represent our clients in all EU trade mark proceedings, including EU trade mark opposition proceedings, as we have always done.
The uncertainty concerning EU trade marks relates to those EU registered trade marks which are presently in force. Unless the UK Governments enacts suitable transitional legislation to recognize registered EU trade mark rights in the UK, then it may be the case that existing registered EU trade marks will no longer provide trade mark protection in the UK. We think this is unlikely because it would result in a loss of rights to EU trade mark registrants, but will provide further information about this when it becomes available.
Similarly, while registered EU designs will (eventually) no-longer cover the UK, we can also continue to file and prosecute registered EU design applications, and subsequently enforce EU design registrations, in view of our unique AIPEX alliance. Consequently, we will be pleased to represent our clients in all EU design proceedings, as we have always done.
Again however, the uncertainty concerning registered EU designs relates to those EU registered designs that are presently in force. Unless the UK Government enacts suitable transitional legislation to recognize registered EU design rights in the UK, it may be the case that existing registered EU designs will no longer provide design protection in the UK. Once again, we think this is unlikely because of the consequences of loss of rights in relation to designs, which rely on novelty, and hence cannot be re-instated by later UK design applications.
In addition, EU design law also provides for unregistered EU design rights. This unregistered right provides design protection for a period of 3 years from when the design is made publically available within the territory of the EU. The protection afforded is different from that afforded by unregistered UK design rights, both substantively and in terms of duration. Accordingly, unless any transitional arrangements are put in place, it is likely that, for some designs, unregistered EU design protection will be lost as far as the UK is concerned. It is also likely that design publications in the UK will no-longer trigger the existence of the right.
For now, nothing has changed and it is business a usual. Inevitably, there will be changes in a few years time, but Wynne-Jones IP is committed to supporting our clients and our associates around the world with all their needs in the UK and the European Union, no matter what the changes in the European IP landscape. Our position as a founding member of the European alliance of independent IP law firms – AIPEX – makes us uniquely placed among UK patent and trade mark attorneys to do this.
We look forward to continuing to be of service.
Daniel Butler | Victor Caddy | Gareth Jenkins | Ian Lambert | James Robertson | Vicki Strachan
For and on behalf of Wynne-Jones IP
A simple overview of the current status from IPOs. Last updated 31st March 2020.
The German Federal Constitutional Court has now issued its long-awaited decision (source) in case 2 BvR 739/17 which was a complaint against the German Ratification Law under which Germany was to ratify the UPC.
On Sunday 15 March 2020 the EPO published a notice advising it is invoking the provisions of Rule 134(2) EPC, and has extended all periods expiring on or after publication of the notice to 17 April 2020. This may be extended by the EPO upon publication of a further notice.
The Executive Director of the EUIPO has today (16 March 2020) issued a decision regarding extensions for all time limits on trade mark and design matters at the EUIPO. In accordance with the decision, all time limits expiring between 9 March 2020 and 30 April 2020 inclusive are extended until 1 May 2020.
In brief, the UK IPO has indicated that it will use its discretionary powers (on a case-by-case basis) to extend time limits where possible under national and international law.
Earlier this year, we reported on the EPO Board of Appeal’s decision to uphold the revocation of the Broad Institute’s CRISPR patent (here). Now it appears that the Broad Institute is gearing up to put forward a petition for review by the Enlarged Board of Appeal as a last resort to save their patent.
European patent attorneys have been getting excited about the Unitary Patent (UP) and Unified Patent Court (UPC) for years, writing articles, and giving talks and presentations about the ins-and-outs and twists-and-turns of the whole thing. So what is the current situation? What has happened now?
Due to the coronavirus outbreak and recent health advice, the WJ team are working from home. It’s business as usual however some services may be slightly slower than normal so please bear with us during this time. As our offices are currently closed we will not be able to access postal mail so please send correspondence and documents by email on firstname.lastname@example.org. Our telephones have been diverted so the WJ team are still contactable by phone on 01242 267 600.