Brexit and patents: 10 key things to know

24 November 2020

On 31 December 2020, the Brexit transition period comes to an end and significant changes to the law in the UK will take effect.

For patents and the law in relation to patents, there are some important soundbites for businesses to be aware of – some of which you may already have heard about, while others may be news outside the UK (even for experienced patent lawyers).



  1. For the obtaining and maintaining of patents, there will be little change. This is because:
    • The UK national patent system is (and always has been) governed by national and international law, not EU law; and
    • The European patent system, pursuant to which a patent covering the UK may be obtained (as a UK 'designation' of a European patent e.g. EP(UK) xxxxxxx), is also governed by national and international law, not EU law. (This is why the European patent system has always had non-EU members, such as Switzerland, Norway and Turkey)
       
  2. There will be no change to the office(s) overseeing the grant of such patents and to which maintenance fees need to be paid.
     
  3. However, the UK's address for service rules in respect of patents are changing. From 1 January 2021, the rules will not permit the provision of an address for service outside the UK, the Channel Islands or Gibraltar in respect of a UK patent (GB or EP(UK)) or an application in the UK IPO. An address for service in the remaining EU or EEA will no longer be permitted. New patent applications filed in the UK IPO from 1 January 2020 will need to comply with the new regime. There will be transitional provisions for applications and proceedings that remain pending on 1 January 2021.
     
  4. UK patent attorneys', solicitors' and barristers' entitlement to represent their clients before/in proceedings in the EPO and the UK IPO will continue.
     
  5. Disputes as to infringement and validity of granted patents covering the UK (national and EP(UK)) are, and will remain, matters for the courts of the UK. (The EPO's remit to hear post-grant oppositions filed within the first nine months of a European patent designating the UK will continue too).
     
  6. There will be no change to the rules as to standing to sue and the establishment of the tort of patent infringement in the UK. For example, quia timet infringement actions will continue to be available upon consideration of the same legal principles, and so it will remain possible to bring a non-strikeable claim for infringement before a relevant marketing authorisation has been granted where the principles reiterated in Teva v Chiesi [2020] EWHC 1311 (Pat) are satisfied.
     
  7. There will be no change to the availability of remedies from the courts in the UK in patent litigation. In particular:
    • Injunctive relief to restrain infringement of a patent in the UK will continue to be available upon consideration of the same legal principles. For example, in standards essential patent disputes, FRAND injunctions will continue to be available further to the UK Supreme Court's judgment in Unwired Planet v Huawei [2020] UKSC 37;
    • Declarations of non-infringement will continue to be available upon consideration of the same substantive legal principles. Where jurisdictional tests are satisfied (which include tests under English common law principles that will continue unchanged), such declaratory relief may include non-UK patents - this occurred, for example, in Actavis v Eli Lilly ([2012] EWCA Civ 517; [2017] UKSC 48).
    • Arrow declarations - a declaration that the applicant party's own product or process, or aspects of it, were known or obvious at a relevant date - will continue to be available upon consideration of the same legal principles. Such relief does not necessarily require the existence of a patent or application covering the UK. Arrow relief was awarded by the Patents Court in Fujifilm v AbbVie [2017] EWHC 2748 (Pat) and GSK v Vectrura [2018] EWHC 3414 (Pat).
       
  8. As a signatory to the Hague Convention on Choice of Court Agreements, the UK courts will continue to recognise and give effect to exclusive jurisdiction clauses, including those conferring jurisdiction on the courts in the UK in respect of licences of patents beyond the UK - and so in such contexts to consider questions of infringement of non-UK patents - as exemplified by judgments in Chugai v UCB ([2017] EWHC 1216 (Pat), [2018] EWHC 2264) and Celltech v Medimmune ([2004] EWHC 1522; [2004] EWCA Civ 1331).
     
  9. Unless agreement is reached to replace (in respect of the UK) the "Brussels" and "Lugano" regimes on jurisdiction and enforcement of judgments in the EU and the EEA, in the UK the common law will govern such issues. The common law already governs such issues as between the courts in the UK and the courts in the US and Canada. The Brexit transition presents some opportunities for well-informed potential litigants.
     
  10. The UK will not be participating in the new Unified Patents Court and Unitary Patents system, if and when it becomes operational in some European countries. The existing systems in the UK noted above therefore will not be affected by the introduction of the new system, and the jurisdictional challenges presented by it.

For in depth commentary on this topic, please explore our article What does Brexit Mean for Intellectual Property? Although necessarily a substantive piece of analysis, the drop-down format enables you to dip into the areas of most interest to you (for example, exhaustion, patents, SPCs, trade secrets, customs arrangements and IP litigation). We also explain the wider legal position, within which intellectual property sits.

For bespoke advice tailored to your business's need, please get in touch.


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