No deal Brexit - what will happen to patents - particularly SPCs and the UPC?

The guidance note talks about patents. As readers will know, much of the substantive UK patent law comes from international conventions. Consequently, patents are largely outside the remit of the EU and there are less Brexit related issues to consider. However, with the unified patent court as the mystery wild card in the patent mix, arguably patents raise more complex Brexit questions.

The full guidance note is available here. As for trade marks & designs and exhaustion of rights, the key bits are below together with a bit of commentary.

SPCs, biotech, compulsory licences and clinical trials 

The plan is for the EU Withdrawal Act 2018 to save the day and ensure that relevant EU legislation is retained in UK law. Consequently, "the existing systems will... remain in place, operating independently from the EU regime, with all the current conditions and requirements."

This means that EU law on SPCs will be kept in UK law and "this law, along with the existing supporting provisions in UK patents legislation, will form the UK’s own supplementary protection certificate regime on exit".

Implications

• Any existing rights and licences in force in the UK will remain in force after March 2019. 
• Pending applications for patents and for supplementary protection certificates will continue to be assessed on the same basis, and new applications can continue to be filed. 
• If legal proceedings involving these rights or licences are underway, they will continue unaffected.
• The SPC regime in the UK will continue to operate as before for UK, EU and third country businesses.
• The conditions for patenting biotechnological inventions will remain in place. 
• For compulsory licensing, UK, EU or third country businesses as holders of patents or plant variety rights which are valid in the UK will continue to be able to apply for a compulsory licence, where there is an overlap between the rights.
• 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.
• For 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.

The Unitary patent and Unified Patent Court

This is where things get more more murky. As we know, the UPC depends on German ratification. This may not happen before 29 March 2019 (or possibly, at all).

As the guidance note says, "if the Unified Patent Court is ratified and comes into force, there will be actions that UK and EU businesses, organisations and individuals may need to consider. The UK will explore whether it would be possible to remain within the Unified Patent Court and unitary patent systems in a ‘no deal’ scenario."

The guidance note identifies the following implications of the Unified Patent Court and unitary patent coming into force and the UK needing to withdraw from one or both systems:

1. Businesses will no longer be able to use the Unified Patent Court and unitary patent to protect their inventions within the UK. 
2. Existing unitary patents will give rise to equivalent UK patent protection to ensure continued protection in the UK.
3. UK business will still be able to use the Unified Patent Court and unitary patent to protect their inventions within the contracting EU countries. However in the UK, businesses will only have the option of protecting their inventions using national patents (including patents available from the European Patent Office) and UK courts.
4. UK business will still be open to litigation within the Unified Patent Court based on actions they undertake within the contracting EU countries if they infringe existing rights.
5. EU business will no longer be able to use the UPC and unitary patent to protect their inventions within the UK but will be able to apply for domestic UK rights as they can now, via the UK Intellectual Property Office and the non-EU European Patent Office.

The note appears to envisage a scenario where the UK is part of the UPC (e.g. if Germany ratifies before 29 March 2019) but then leaves on or after Brexit day. This uncertainty over whether the UK will join (and if it does, whether it will then leave) is less than desirable. 

Correspondence addresses and confidentiality

Finally, the guidance note provides some firmer guidance by reassuring readers that:

1. There will be no immediate changes to the UK address for service rules. 
2. Privilege for patent attorneys will remain unaffected as this is not determined by reference to EU membership.