We have used this title before. Please forgive our lack of originality.
For a long time, a source of tension among UK trade mark and design attorneys was the fact that the UK was one of the few EU member states to abide by a decision to allow attorneys from any European Economic Area country to represent clients in proceedings before any national office of an EU member state. With this in mind, one of the ironies of Brexit is that, from 1st January 2021, UK trade mark and design attorneys will (in general – please see below for a super-important exception!) lose the right to represent clients before the EU IPO. From this date, they will not be allowed to undertake any new work, and they will only be allowed to see to a conclusion cases that they are already handling as of 31st December 2020.
In contrast, the UK IPO had intended to continue to allow trade mark and design attorneys from any European Economic Area country to represent clients in UK matters. Oh yes, and UK attorneys would be allowed too. But, in what is the intellectual property profession’s equivalent of a wraggle over fishing rights in British waters, the might of the UK’s IP lobby has prevailed and the British Government has announced that the rules will be changing. Well, they will if Parliamentary time can be found to pass the necessary legislation before the end of the year……
From 1st January, a UK or Channel Islands address will be needed in all proceedings before the UK IPO. These rules will apply to new applications, new oppositions and other proceedings, and they will apply to UK trade marks, designs and patents. (Patents are not otherwise greatly affected by Brexit because there is no EU patent system – the European Patent Convention is nothing to do with the EU and the UK is remaining a member of it). A UK address for service will not be required for the renewal of existing registered or granted rights. Furthermore, a UK address for service will not be needed until 31st December 2023 for UK clones of EU trade mark registrations and design registrations. This is enshrined in the UK's Withdrawal Agreement with the EU. (Yes, the one, Prime Minister, Boris Johnson, tried to lose in his shredder).
We know we keep harping on about it, but, in Wynne-Jones, our trade mark and design attorneys are able to continue representing clients before both the EU IPO and the UK IPO. This is because of AIPEX, our European operation, which is based in the Netherlands. This saves the need to have UK attorneys who are different from your EU attorneys. This, in turn, means lower costs, less admin, and a more joined up approach.
We have used this title before. Please forgive our lack of originality. But, for us, it’s true.
Does owning IP rights improve economic performance?
A recent study performed by the European Patent Office (EPO) and the European Union Intellectual Property Office (EUIPO) has shown that companies which own at least one patent, trade mark or registered design generate on average 20% higher revenues per employee and pay their staff on average 19% higher wages compared to companies that do not own any of these intellectual property (IP) rights.
Let it go!
Keeping an IP budget afloat despite sunk costs.
The cost of securing IP can be heavily front loaded. Examples of such costs include patent drafting, pre-filing searches, filing fees, etc. These costs become “sunk” costs in that they cannot be recovered. Because IP protection can be a relatively long process, at any time during the process there are likely to be significant “prospective” costs: future costs that may be wholly or partially avoided depending on actions taken.
Managing your business-critical IP during the COVID-19 crisis
UK businesses are fighting for survival during the continuing COVID-19 outbreak and trying to trade under difficult conditions, the likes of which haven’t been seen in the living memory of most business people. If you’re afraid that your business is going to the wall, it probably isn’t the top of your mind to pay for a patent application for your new technology or a registration of the trade mark for your brand new clothing range, right? Where is the money coming from to invest in such luxuries as IP, we hear you say, when staff are being furloughed and orders have been postponed?
Videoconferencing: the future of oral proceedings at the EPO?
The European Patent Office has announced that videoconferencing will become the norm for oral proceedings before examination and opposition divisions until at least 15 September 2021. But is this a taste of what the future holds for oral proceedings at the EPO?
EPO-CNIPA pilot for International Search
On 12 November 2019, the EPO and CNIPA agreed to enhance their bilateral co-operation to give patent applicants filing an international patent application in English at the CNIPA, the choice to opt for the EPO as their ISA. A two year pilot programme launched on 1 December 2020, offers applicants filing international applications with the CNIPA or the International Bureau (IB) of the World Intellectual Property Office (WIPO) the opportunity to select the EPO as their ISA and as their International Preliminary Examining Authority (IPEA), rather than CNIPA.
Changes to trade mark and patent law in Gibraltar
In October 2020, the UK Government declared that the territorial effect of five important IP treaties would be extended to cover Gibraltar from 1 January 2021. These treaties are the Paris Convention, the Patent Cooperation Treaty, the Madrid Protocol (on International trade marks), the Nice Agreement (on trade mark classification), and the Berne Convention (on copyright). Following on from this, a bill was passed in on 11 December 2020, making some amendments to trade mark and patent law in Gibraltar.