As the world is getting used to the recent front-page news about Brexit, now is the time to do a systematic analysis. Although a two-year transition period is ahead, time is running out fast. This is why you have to change the system of approaches today.

Below is TOP 10 steps to be made in order to protect intellectual property portfolio of any global company.

1. For whom will it be relevant to keep track of legislative changes?

Brexit will be the most relevant for holders of trademarks and industrial designs as they will most likely have to re-register them. There will, however, be no need to re-patent inventions and utility models.  

2. Will the EU intellectual property law be effective in the UK during the transition period?

Yes, while negotiations between London and Brussels are going on, existing EU directives and other legislation continue in full force and effect.

3. How can rights to existing trademarks be protected?

As the EU trademarks will no longer be protected in the territory of the UK (unless other arrangements are reached) after the UK leaves the European Union, it will be necessary to re-register trademarks under the national procedure through the UK Intellectual Property Office.

4. How can Ukrainian residents register new trademarks in the UK after its exit from the EU?

If a trademark is sought for the UK only – under the national procedure (by filing an application with the UK Intellectual Property Office); if trademark protection is required in several countries, including the UK, – under the Madrid System.

5. What should Ukrainian residents do if having an invention or utility model patented in the UK under the regional procedure?

There will be no need to re-patent registered inventions and utility models.

6. How can Ukrainian residents obtain new patents for trademarks (utility models) in the UK after the latter leaves the EU?

If a new patent is sought for the UK only – under the national procedure; and if patent protection is required in several countries, including the UK, – under the regional procedure (the European Patent Convention) or the international procedure (the Patent Cooperation Treaty).

7. What should Ukrainian residents do if having an industrial design registered in the UK under the regional procedure?

The industrial design will have to be re-patented in the UK under the national procedure. But here problems may arise with such a criterion of protectability as novelty.

8. How can a resident of Ukraine obtain a patent for an industrial design in the UK after its exit from the EU?

If a patent is sought only for the UK, – under the national procedure; UK + 1 country – under each country’s national procedure; UK + 2 or more member countries of the Hague Convention – under the national procedure for the UK and under the international procedure for the rest of the countries (in accordance with the Hague Convention).

9. What is behind threats to an intellectual property portfolio?

First, the phenomenon of «patent trolls» is worldwide, and therefore, we do not rule out a rise in bad faith trademark registrations in the UK. Second, if the UK has its own autonomous legislation, one may face the risk of an early termination of a trademark where the respective goods and services are not sold in the territory of the UK. Third, there may be technical reasons, such as failure to pay charges for the extension of the duration of the title of protection or certain breakdowns in communication between various patent offices.

10. Does Brexit imply any additional financial costs?

Certainly, the costs of patent registration services, and in some cases also the litigation costs, will rise.

Brexit offers new opportunities for intellectual property development in a broad sense. New approaches will emerge for issues related to “parallel imports” and intellectual property on the Internet. Amid increasing competition between brands and innovative technologies, competition will intensify on regional markets.

The changes generate the challenges. Will live, will see whether it becomes a new opportunity for business development, or leads to the disappearance of currently successful companies at the market.

  KEY CONTACTS

Vladyslav Podolyak
counsel
podolyak@vkp.ua

Anna Kyryk 
junior associate
kyryk@vkp.ua

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