Problems loom for soon-to-be implemented European Unitary patent
By Sheila Pursglove
Legal News
The surprise “Brexit” result in the recent UK referendum is already causing major political, economic and social turmoil. It will also impact European intellectual property rights, according to Monte Falcoff, a patent lawyer and principal with Harness Dickey in Troy.
“Once the UK legally exits the EU, the strategies will change for future patent enforcement, and trademark and industrial design protection,” he says.
The commonly used European Patent Office (EPO), which examines and grants patents nationalized in applicant-selected European countries, is set up by the European Patent Convention, entirely distinct from the EU.
“Some non-EU countries, such as Switzerland, are EPO members,” Falcoff says. “Brexit will not affect the inclusion of the UK as an EPO member and the ability of patent owners to nationalize their EPO patents in the UK.”
According to Falcoff, problems loom for the soon-to-be implemented European Unitary Patent – allowing a patent owner to enforce its EPO patent throughout all EU countries based on a single court proceeding – and for the Unified patent court system, created by, and to be run by, the EU.
Three trial courts were set to begin next year: London for chemistry and pharmaceuticals, Munich for mechanical, and Paris for all others including electrical and telecommunications. An implementation delay is now expected and the trial court earmarked for London will probably instead be seated in Italy, Europe’s fourth largest economy.
On a more strategic level, patent owners may reconsider if they will enforce a patent through the Unitary Patent system without the UK versus enforce it country-by-country as is currently done, Falcoff notes.
“Typically, a company will currently pick the country of most damages or injunctive value, or the one with the most pro-patentee laws, to bring the first lawsuit,” he explains. “Resolution of that lawsuit will often cause the parties to settle in the other countries.
“Some countries such as Italy are reputed to endlessly delay a court decision on patent infringement and to commonly invalidate patents – known as the ‘Italian torpedo.’ So venue shopping will again be at a premium.”
Since European Community Trademarks (CTM) are a function of the EU, companies that only have CTM trademark registrations will need to consider direct country filing in the UK.
“It’s expected the Brexit negotiations between the UK and EU will provide a transition period where CTM registrations can optionally be filed with the UK – but the exact procedural details may be a year or two away,” Falcoff says.
Industrial designs may be protected with the EU Intellectual Property Office.
“European industrial designs are more like trademark or trade dress protection than U.S. style design patent protection,” Falcoff says. “Since this right is managed by the EU, the Brexit vote will impact it in a similar manner to CTM protection.”
Finally, Falcoff notes that European copyright protection should not change since it has always been protected on a national country-by-country basis and was not centralized.
And there are those who see a definite upside to the Brexit result.
“Some corporate executives of my continental European clients are hopeful Brexit will cause the EU to reduce its bureaucracy and use more common sense for its future regulations,” says Falcoff, who will get an up-close-and-personal look at the mood in the UK during an upcoming London trip.
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