Brexit and Designs – Cloning is Imminent

November 6, 2020
By Matthew Graff and Sam Frost

It has been 24 years since British scientists cloned Dolly the sheep, and now Brexit is about to give rise to an entirely different type of cloning. The Brexit withdrawal agreement officially ended the United Kingdom’s membership of the European Union on January 31, 2020, and provides for a transition period that ends on December 31, 2020. Industrial design owners should be aware of the resulting changes that come into effect in the New Year.

Industrial design protection may be obtained in Europe by filing a single Community design application. Such applications are handled by the European Union Intellectual Property Office (EUIPO) in Alicante, Spain, which conducts examination and issues registrations. EUIPO is also responsible for registering European Union trademarks. Currently, a registered Community design confers exclusive protection across 28 member states, including the United Kingdom, with a term of up to 25 years subject to the payment of renewal fees every 5 years.

Beginning January 1, 2021, applications for registered Community designs will no longer provide protection in the UK. Protection in the UK will require a separate application filed with and examined by the United Kingdom Intellectual Property Office (UKIPO).

For Community design registrations already granted by December 31, 2020, UKIPO will automatically “clone” such existing registrations, allowing protection to continue in the UK. The UK cloned registration will give the owner equivalent rights, keeping the original filing and priority dates. There will be no cost and no paperwork needs to be filed for the initial registration.

For Community design applications filed by December 31, 2020 but not yet granted, the application will need to be refiled with UKIPO by September 30, 2021 in order to clone the application for the UK and thereby maintain the relevant filing/priority dates.

Renewal fees must be paid separately to UKIPO for the cloned rights, and renewal dates may vary slightly between the European registrations and the UK cloned registrations.

Subject to some restrictions, it will be possible for owners to “opt out” of receiving a corresponding UK right. As an alternative to opting out, Community design registration owners can simply allow their UK cloned rights to register automatically and subsequently lapse for non-payment of the first renewal so no costs are incurred.

Brexit will also modify Europe’s unregistered design rights. Currently, unregistered design rights can arise automatically upon disclosure of the design anywhere in the UK or EU, with a term of three years. Designs disclosed prior to the end of the transition period will still be entitled to such protection. Beginning January 1, 2021, designs disclosed in the UK will continue to establish unregistered rights in the UK but not in the EU, and the corollary is that designs disclosed in the EU will establish unregistered rights in the EU but not in the UK. This creates potential problems if disclosure in one jurisdiction becomes “prior art” for the other, and companies therefore need to be mindful deciding when and where to first disclose a new design.

Similar changes are going to affect European Union trademarks beginning January 1, 2021, which will be valid in EU member states only and will no longer cover the UK, as reported here and here. In contrast, the European Patent Convention (EPC) is separate and distinct from the European Union, and the UK will remain a signatory state of the EPC. Brexit will not affect the European Patent Office and European patents/applications in any way. However, the UK’s participation in the EU’s contemplated Unified Patent Court is now in question.

As usual, it is recommended that applicants looking to obtain or maintain design protection seek professional advice. It would be prudent for all businesses with an interest in European designs to review their existing rights and plans for new designs and ensure that, after the transition, appropriate protections are in place in both the UK and Europe.

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