[co-author: Mallorie Stratton – Summer Associate]

The recent “Brexit” referendum in which a majority of United Kingdom voters elected to leave the European Union has caused significant political and economic turmoil. It also raises questions about how EU designations for intellectual property rights will be affected. For now, the status quo prevails. Yet, when the UK completes its withdrawal from the EU, a process that could take two years or more, changes will be necessary. Here are a few considerations to keep in mind.

Trademarks

European Union Trademarks (EUTMs, previously known as Community Trademarks or CTMs) will no longer have effect in the UK following the exit. It seems probable that the UK will adopt some type of transitional provision to protect EUTM registrations in the UK with the same priority status they currently hold. Such conversion could happen automatically or by application, but will likely entail paying additional fees. Protection in the UK post-exit will also likely require providing proof of use within the UK. Further, use in the UK will no longer support an EUTM. Thus, EUTMs that are in use solely in the UK will be vulnerable to cancellation proceedings (or an inability to be renewed). If you own an EUTM that will need to be transitioned or maintained, you should review in which countries it is being used and consider expanding use to maintain both EU and UK protection.

Licenses

With the UK no longer being part of the EU, any licenses that designate the EU as the territory may be ambiguous as to whether the UK is included. It is advisable to review such agreements to determine if the license should be amended to clarify the territory.

Patents

European patents should remain largely unaffected by the departure. The UK will remain a member to the Patent Cooperation Treaty (PCT) and the European Patent Convention (EPC), as neither is an instrument of the EU. The European Patent Office already works with several non-EU countries, and its operations should remain unchanged. It is unlikely, however, that the Unitary Patent will take effect in the UK, and its coming into effect at all will likely be delayed by the UK's departure.