How can you secure patent protection post Brexit?

The UK is planning to leave the EU in March 2019 and one of the many questions that businesses are asking is what impact will this have on them obtaining and maintaining their patent protection.

By way of a bit of background - Patents are jurisdictional in nature, meaning that both the filing of patent applications and the ability of courts to hear cases regarding suspected patent infringements are geographical or territorial in nature.

That is to say that while a UK granted patent restricts third parties from making or selling in the UK, the patent would have no legal basis and carry no legal recourse outside of the UK. 

At present, companies and individuals that wish to sell or license their invention abroad can apply for a European patent using the European Patent Office, and a successful application will protect their patent in more than 30 countries across Europe. 

Alternatively, they can apply for international patent protection under the Patent Cooperation Treaty (PCT) - a unified procedure for filing patent applications applicable in over 150 contracting states.

In light of the UK’s pending withdrawal from the European Union, one of many legal challenges this raises for innovative businesses is the impact that this will have on obtaining patent protection and indeed what the scope and extent of that protection will be after March 2019.

I have summarised below the anticipated effect of Brexit on each one of the routes described above, ie UK granted patents, European granted patents and PCT granted patents.

UK patent applications

UK patent applications are handled by the UK Intellectual Property Office (IPO). The UK Patents Act 1977 provides the legal framework for UK patent applications. 

There is no reason to anticipate any changes to UK IP law or practice in relation to UK patent applications as a result of the UK leaving the EU. The IPO will continue to handle patent applications in the UK regardless of its membership to the EU.

European patent applications

The European Patent Convention (EPC) provides the legal framework for European patent applications which are handled by the European Patent Office (EPO).

The EPC is in fact an international treaty rather than a European one, and The European Patent Office is not an EU institution.

As such both the EPC and the EPO are independent of the EU.

The UK, along with the 27 other EU countries and another 10 non-EU countries, are signatories to the European Patent Convention and so membership is obviously not dependent on being part of the EU. 

In view of this, no changes are expected to be made to the European Patent Convention, European Patent Office practice, or the UK’s membership to the EPC.

International Patent Cooperation Treaty (PCT) applications

The Patent Cooperation Treaty provides the legal framework for international patent applications. 

It is an international treaty and as such the UK’s membership of the EU has no bearing on the PCT. 

The UK is and will almost certainly remain a signatory of the PCT which is administered by the World Intellectual Property Office (WIPO). There is no reason to suggest that any changes will be made to the treaty, the UK’s membership of it or WIPO practice as a result of Brexit.

So the good news is that the UK’s withdrawal from the EU is not currently anticipated to have any effect on the current patent system either here in the UK or abroad via the EPC or PCT.

It looks therefore as though it will continue to be business as usual with regards to obtaining patent protection within the UK, Europe or via the PCT.

Kate Butler is the Patents Expert supporting innovate2succeed; A European Union and Innovate UK funded programme designed to provide hands-on support to innovative businesses.