Intellectual property after 1 January 2021
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Intellectual Property
16
Nov

Intellectual property after 1 January 2021

Key information for customers and users of IP about how the IP system and the Intellectual Property Office will operate after the end of the transition period.

The transition period ends on 31 December 2020. On 1 January 2021 there will be changes to UK intellectual property law to ensure the smooth departure from EU IP systems.

The following is a summary of the key changes.

Use of representatives and address requirements to represent

From 1 January 2021, UK attorneys will be unable to represent clients on new applications or new proceedings at the EU Intellectual Property Office (EUIPO). UK trade mark owners will need to appoint an EEA attorney to represent them on new applications and proceedings before the EUIPO.

However, the Withdrawal Agreement (WA) ensures that UK legal representatives can continue to represent their clients before the EUIPO in cases that are ongoing at the end of the transition period.

UK Address for Service (AfS)

The IPO are considering making changes to the rules on correspondence addresses (‘address for service’ - AfS) at the end of the transition period.

A call for views was published asking for views on removing reference to the European Economic Area.

This would mean that only UK or Channel Island AfSs would be accepted for new applications and new requests to start contentious proceedings.

Any change would apply across all the registered IP rights (patents, trade marks and designs) and will be notified as soon as possible.

Changes to IP rights

Trade Marks

Comparable UK trade mark and Design rights will be created at the end of the transition period under the terms of the Withdrawal Agreement.

On 1 January 2021, The IPO will create a comparable UK trade mark for every registered EU trade mark (EUTM). Each of these UK rights will:

  • be recorded on the UK trade mark register
  • have the same legal status as if you had applied for and registered it under UK law
  • keep the original EUTM filing date
  • keep the original priority or UK seniority dates
  • be a fully independent UK trade mark that can be challenged, assigned, licensed or renewed separately from the original EUTM

You will not:

  • need to file an application for this right or pay an application fee. There will be as little administration involved as possible
  • receive a UK registration certificate, but you will be able to access details about the trade mark on GOV.UK and can take a screen shot from there as evidence of your right.

Businesses, organisations or individuals that have applications for EUTMs which are not registered at the end of the transition period will have a period of nine months to apply in the UK for the same protection. In this case, UK application fees will be payable, and the application will be subject to UK examination and publication requirements.

Our digital and paper forms will be amended to include a new section for claiming the earlier filing date of the corresponding EUTM application.

For information on renewals, opt out process and numbering as well as more detail on subjects covered in this section please refer to our business guidance

Please see section below on Geographical Indications for details on this IP right and the relationship with trade marks.

Designs

Re-registered UK designs will be created at the end of the transition period under the terms of the Withdrawal Agreement.

On 1 January 2021, the IPO will create a re-registered design for every Registered Community design (RCD). Each of these rights will:

  • be recorded on the UK designs register
  • have the same legal status as if you had applied for and registered it under UK law
  • keep the original RCD filing date
  • keep the original priority date
  • be a fully independent UK design that can be challenged, assigned, licensed or renewed separately from the original RCD.

You will not:

  • need to file an application for this right or pay an application fee. There will be as little administration involved as possible
  • receive a UK registration certificate. You will be able to access details about the design on GOV.UK and can take a screen shot from there as evidence of your right.

Businesses, organisations or individuals that have applications for RCDs which are either not registered or have deferred publication at the end of the transition period, will have a period of nine months to apply in the UK for the same protection. In this case UK application fees will be payable, and the application will be subject to UK examination requirements.

Our digital and paper forms will be amended to include a new section for claiming the earlier filing date of the corresponding RCD application.

For information on renewals, opt out process and numbering as well as more detail on subjects covered in this section please refer to our business guidance

International Trade Marks and Designs

International trade marks and designs designating the EU will continue to have protection in the UK under the terms of the Withdrawal Agreement.

On 1 January 2021, the IPO will create:

  • we will create ‘a comparable UK trade mark for every international trade mark (EU) that is protected at the end of the transition period’
  • a re-registered UK design for every international design (EU) that is protected at the end of the transition period

Where an international trade mark or design designating the EU has been applied for, but is not yet protected, the holder will have a period of nine months to apply for the same right as a UK trade mark or design. UK application fees will be payable, and the application will be subject to UK examination requirements and for trade marks publication requirements.

For information on renewals, opt out process and numbering as well as more detail on subjects covered in this section please refer to our business guidance.

Unregistered Designs

Unregistered community designs that arise before the end of the transition period will continue to be protected in the UK for the remainder of their three year term through continuing unregistered designs.

From 1 January 2021, a supplementary unregistered design (SUD) will become available in UK law.

The SUD will provide similar protection to that conferred by the unregistered Community design, but for the UK only.

The SUD will be established by first disclosure in the UK or another qualifying country. First disclosure in the EU will not establish a SUD right. It could destroy the novelty of the design should you later seek to establish UK unregistered rights.

Business will need to consider carefully where to disclose their products to ensure they have adequate protection in their most important market.

More information is available in our business guidance.

Patents

You can apply for a European patent through us or direct to the European Patent Office (EPO) to protect your patent in more than 30 countries in Europe, using the (non-EU) European Patent Convention (EPC).

As the EPO is not an EU agency, leaving the EU does not affect the current European patent system. Existing European patents covering the UK are also unaffected.

European patent attorneys based in the UK continue to be able to represent applicants before the EPO. See the notice on the EPO website news story for further information.