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, and is now on the Gibraltarian statute book as the Trade Marks and Patents (Miscellaneous Amendments) Act 2020. The bill can be accessed here.
Under these amendments, international trade mark applications filed on or after 1 January 2021 designating the United Kingdom will have effect in Gibraltar. WIPO have clarified that this also applies to a designation of the United Kingdom filed after 1 January 2021, presumably on an international trade mark application filed before 1 January 2021.
Further, comparable trade marks (that is, UK trade marks corresponding to existing EU trade marks, which will come into existence at the end of the transition period) will have effect in Gibraltar, whether they result from a direct EU trade mark application, or an EU designation of an international trade mark registration.
UK registered designs automatically extend to Gibraltar (under the Gibraltar Designs Act 1928), and so there is no need for the amendments to mention comparable designs.
On the patent side, any patents granted in the United Kingdom resulting from PCT applications filed on or after 1 January 2021 will have effect in Gibraltar. It is debatable whether this also extends to EP(UK) patents derived from PCT applications; the amendment requires that the patent must be “registered in the United Kingdom under the United Kingdom’s Patents Act 1977” in order to extend to Gibraltar, and it is not obvious whether this is the case for an EP(UK) patent (although a canny lawyer could doubtless argue either way).
If you have any queries about any of the points raised above, please get in touch.
Jason Stevens, Patent Attorney and Maximilian Theiss, Paralegal
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.
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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?
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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.
Much Ado About Nothing
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