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Brexit and IP Rights

August 17, 2016

On June 23rd, the UK voted to leave the European Union (Brexit). This decision raises many questions regarding existing and future intellectual property rights in the UK and Europe. The answers to these questions may have a significant effect on your rights.

What We Know Now Regarding Trademarks:

(a) Trademarks and designs currently registered in the European Union or EU (also known as "EUTM" or "Community Trademarks") currently cover the UK and will continue to be in force in the (UK) in the near future. It is almost certain that the UK Intellectual Property Office will take steps to continue those rights in the UK even after the UK leaves the EU. Our associates expect a transitional procedure to be implemented once Brexit is completed to convert such rights into equivalent national UK rights.

(b) However, once the UK leaves the EU, future EU registrations will not include protection in the UK. At that point, filing a separate national UK application will be necessary (this is the case for most countries anyway).

Practice Tip: It may be a good idea to try to obtain registrations in the UK now, to ensure there are no intervening marks and no lapse in protection when the UK leaves the EU.

What We Know Now Regarding Patents:

(a) The European Patent Convention is an international (not European) treaty, and the UK's membership is independent of the EU. Therefore, there will be no impact on existing European patents that are validated in the UK or the granting of European patents and their validation in the UK. You will still be able to obtain patent protection for the UK through the EPO, just as we do today.

(b) Since the UK's membership in the World Intellectual Property Organization (WIPO) is independent of its membership in the EU, Patent Cooperation Treaty (PCT) applications will continue to be used to preserve rights in the EU and the UK.

(c) Enforcement of patents in the UK, however, will no longer be subject to EU regulations after Brexit takes effect. No action is required to preserve your patent rights at this time, and when new provisions are put in place we shall keep you informed.

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Braginsky, Philip Partner Partner 212.216.8065 VCard
Goldsmith, Amy B. Partner Partner 212.216.1135 VCard