HGF Guest Blog: How will “Brexit” affect the European patent system?

Grant RolloNews, Uncategorised

How will “Brexit” affect the European patent system?
by Dr Andrew McGettrick, Senior Patent Attorney at HGF, a Corporate Sponsor of Technology Scotland

Now that the United Kingdom (UK) has formally triggered the two-year exit process from the European Union (EU), negotiations have officially begun to determine the future relationship between the UK and the EU. A question we are often asked is: how will these negotiations affect the European patent system? The answer to that question is simple: the European patent system as we know it will not be directly affected by Brexit. This brings some much-welcomed certainty to users of the European patent system amidst the uncertainty of the Brexit negotiations. What is perhaps less clear is the effect of Brexit on the proposed Unitary Patent (UP) and Unified Patents Court (UPC). However, we are reasonably optimistic that a way will be found for the UP and UPC to come into effect with the UK as a full participant.

In Europe, national patent systems co-exist with a centralised European patent system. A strategy commonly adopted by SMEs to obtain protection in their main markets most cost effectively is to file national patent applications in a small number of European states (e.g. UK and Germany). Applying for patent protection in a greater number of European countries via national patent offices can be complex and costly. Conversely, a European patent can be obtained from a single European patent application, in a single language, which can be effective in up to 41 states. The European patent system thus provides significant cost benefits, and simplifies the procedure, for those seeking patent protection in multiple European countries.

The knowledge that the UK will continue to be part of the European patent system after Brexit is highly significant because it tells us that European patents will continue to have effect in the UK after Brexit. UK based European patent attorneys will also continue to be able to act in all matters for their clients at the European Patent Office (EPO) as they do currently.
How do we know this? Simply, the European Patent Convention (EPC) on which the European patent system is based is not EU law, but rather a multi-lateral treaty to which the UK is a party. Indeed, a number of non-EU states are already parties to the EPC, including Norway, Switzerland and Turkey. It is therefore clear that the UK will remain a full member of the existing European patent system after Brexit. It is also clear that Brexit will have no direct effect on individual national patent systems.

After grant, a European patent becomes a collection of individual national patent rights. For a European patent to take effect in a particular EPC contracting state, an administrative “validation” is required in that state. The validation requirements vary from state to state, and translations of at least part of the patent specification are usually required. Annual renewal fees are payable in each state to keep the individual patent rights in force. Cases relating to the infringement and validity of European patents are heard and decided upon individually by national courts. The proposed UP and UPC aim to improve these systems.

The proposed UP aims to: make it possible to obtain patent protection in up to 26 EU member states by submitting a single request to the EPO after grant of a European patent; dispense with translation requirements when opting for a UP; and require payment of only a single annual renewal fee to keep the patent in force in all participating EU states. This should lead to significant cost savings for applicants who would like their European patents to have effect in multiple European states.

The UPC is a proposed common patents court in which a single ruling can be made on the infringement and validity of European patents which automatically has effect across all participating EU states. This should provide a more cost effective route for bringing infringement proceedings or challenging the validity of a European patent across the participating EU states, and provide greater legal certainty.

Prior to the Brexit vote, the proposed UP and UPC looked almost certain to come into effect, with the UK playing a leading role. Recruitment for judges had begun, locations for the court had been identified (including a lease being signed on a building for the London branch) and an IT system had been commissioned. However, following the Brexit vote, and also a later constitutional challenge in Germany, there are now increased doubts over whether the UP and UPC will come into effect at all and, if they do, whether the UK will take part.

Unlike the EPC, all participating member states of the UP and UPC are EU member states. Non-EU EPC states such as Norway, Switzerland and Turkey are not part of the UP or UPC agreements. As things stand, Brexit will similarly exclude the UK from the UP and UPC. That said, it is still possible for the UK to be part of the UP and UPC even after Brexit. To make that happen, the UK would need to negotiate a new relationship with the participating EU states. The UK government has made it clear that they do want the UK to be a part of the UP and UPC, and are continuing to take steps in that direction. With the UK being one of the main countries for patent filing and patent litigation in Europe, there are also clear benefits of UK participation in the UP and UPC for the other participating EU states. Accordingly, while Brexit may have raised new obstacles, it may be that the UP and UPC will still ultimately come into effect with the UK as a full participant.
In summary, Brexit will not affect the European patent system as it stands today. While it remains to be seen what role Brexit will play in determining the future of the proposed UP and UPC, we are reasonably optimistic that a way can be found for the UP and UPC to come into effect with the UK as a full participant.

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