BUSINESS WEST – CONNECTING BUSINESSES inspire Securing patents after Brexit By Kate Butler, IP expert


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. 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:


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.


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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.


Here are some of the key points:


Awareness Use GDPR’s two-year lead-in period to raise awareness and update your risk register accordingly.


Information Held Document what personal data you hold, where it came from and who you share it with. Post GDPR if you have inaccurate data and share this with another organisation you will have to tell the other organisation about the inaccuracy so it can correct its own records.


Communicating privacy information Future privacy notices will now need to explain your legal basis for processing data, data retention period and right to complain.


Individual Rights On the whole, the rights individuals will enjoy under GDPR are the same as those under the DPA but with significant enhancements. The main rights for individuals under GDPR include: • The right to be informed • The right of access • The right to rectification


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 anticipated to have any effect on the current patent system. 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.


• The right to erasure • The right to restrict processing • The right to data portability • The right to object


Subject Access Requests The timescales for responding to requests for information will be reduced to a month and in most cases, you will not be able to charge the applicant.


Consent It is advisable to review how you are seeking, obtaining and recording consent. Consent needs to be freely given, specific, informed and unambiguous. GDPR makes reference to consent and explicit consent and it is for you to provide evidence that consent was obtained.


Data Breaches Start to make sure you have the right procedures in place to detect, report and investigate a personal data breach. This could involve assessing the types of data you hold and documenting which would fall within the notification requirement if there was a breach. Whatever your business, it’s a good time to start making plans.


NOVEMBER/DECEMBER 2017 insight 19


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