EU Exit: Changes to patent law from 1 January 2021

Guide

Last updated 15 December 2020

The UK has agreed a deal with the EU. This page tells you the new rules from 1 January 2021. It will be updated if anything changes.

The Patents (Amendment) (EU Exit) Regulations 2019 ('the Patents Regulations 2019') will come into effect at the end of the transition period on 31 December 2020. These regulations will bring current EU legislation into UK law as far as possible, to maintain current systems and processes.

Patent law: what stays the same

Patent applications and existing rights
You can continue to apply for, and be granted, a patent by the Intellectual Property Office (IPO). Pending applications for patents will continue to be assessed on the same basis.

The requirements and processes for grant will not change, nor will the rights you obtain when a patent is granted. Any existing rights and licences in force in the UK will remain in force after the transition period. If legal proceedings involving these rights or licences are underway, they will continue unaffected.

UK patent protection and representation at the European Patent Office
You can continue to apply to the European Patent Office (EPO) for patent protection which will cover the UK. Existing patents from the EPO are also unaffected.

UK-based European Patent Attorneys can continue to represent applicants at the EPO. Please see the notice published by the European Patent Office.

The UK will continue to be a participating state in the European Patent Convention.

Patenting biotechnological inventions
The conditions for patenting biotechnological inventions will remain in place.

UK, EU and third country businesses as patent holders, third parties and applicants can continue to make decisions on the basis of the current legislation.

Patent examiners will continue to apply the same law when scrutinising patent applications in this area. Third parties who wish to challenge the validity of a patent will be able to do so on the same grounds as at present.

Compulsory licensing
UK, EU and third country businesses will continue to be able to obtain a compulsory licence for manufacturing a patented medicine to meet a specific health need in a developing country.

Pharmaceutical product testing
UK, EU or third country businesses can continue to rely on the exceptions from patent infringement provided for various studies, trials and tests carried out on a pharmaceutical product.

Legal representation
You will not need to change your legal representative, which can still be located in the UK, Isle of Man, or the EEA. Communications between patent attorneys and their clients will remain privileged, as this is not subject to EU membership.

Address for service
Detailed guidance is available on address for service for address for service for intellectual property rights from 1 January 2021.

Changes to patent law

A few specific areas of the patents process have been adjusted by the Patents Regulations 2019.

Cross-licensing with plant variety rights
At present, UK law allows holders of overlapping patents and plant variety rights to apply for compulsory licences to prevent one right from interfering with the use of the other.

From 1 January 2021, Community plant variety rights will no longer have effect in the UK. You will not be able to use them to get a compulsory licence on a patent in the UK.

You will still be able to do so based on UK plant breeders' rights. This will include Community plant variety rights that are converted to UK rights at the end of the transition period.

Security for costs
The Patents Rules contain provisions on when a party to proceedings before the IPO can be required to provide security for costs or expenses incurred by the other side.

The EU's arrangements for civil judicial cooperation mean that an EEA resident cannot be the subject of an order to provide such security.

From 1 January 2021, the UK will fall outside of those arrangements and the exception will no longer apply.

The Patents Regulations 2019 remove the exemption for EEA residents, so that any person resident outside the UK may be subject to an order for security.

Changes to Supplementary Protection Certificates (SPC) law

Detailed guidance is available on supplementary protection certificates from 1 January 2021.

Judgements of the Court of Justice of the European Union

After the Transition Period, it will no longer be possible for UK courts to make references to the Court of Justice of the European Union (CJEU) for interpretation of the SPC legislation and other retained EU law.

Judgements of the CJEU issued before 31 December 2020 will continue to apply to the retained EU law after the transition period. The amendments made by the Patents Regulations 2019 are written to have the same meaning as the original EU legislation, so that existing case law still applies.

From 1 January 2021, UK courts will continue to apply this existing CJEU case law in any SPC actions. SPC examiners will also take account of this existing CJEU case law when examining SPC applications. In addition, if the UK courts have referred a question to the CJEU before the end of the transition period and this question is still pending on 1 January 2021, then it will remain before the CJEU until its resolution.

Other than these pending referrals, UK courts will not be required to follow judgements of the CJEU issued from 1 January 2021 onwards. They may be taken into account, but it will be for the court to determine the extent to which the post-transition period case law applies. This will also apply to hearings before the IPO on SPC-related matters.

Further information

The database at legislation.gov.uk will contain information on retained EU law and any amendments made to it.

The IPO's unofficial consolidations of the Patents Act, Patents Rules, and the patents specific sections of the Copyright, Designs and Patents Act will be updated with the relevant changes in time for the end of the transition period.


First published 25 November 2020