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K. Will I still be able to obtain SPCs following Brexit?

Yes – Following the end of the transition period you will need to apply in the same way as before, by submitting an application at the UKIPO, with the same timescale and the same documentation as currently required. However, the availability of extensions of the term of SPCs (following paediatric studies) will be determined based on equivalent provisions in the UK’s Human Medicines Regulations 2012.

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L. During the transition period, does my EU Trade Mark registration still protect my trade mark in the UK?

Yes – in practice, for the time being, nothing has changed; while the UK is no longer a member of the European Union, EU-wide IP rights are still protected in the UK under existing rules until 31 December 2020.

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M. What effect will the UK’s formal exit from the EU have upon the scope of protection provided by an EU Trade Mark registration?

IP rights are territorial in scope. Following the end of the transition period, an EU Trade Mark registration will cease to protect the trade mark in the UK. However, owners of EU Trade Marks registered before the end of the transition period will be granted automatically a “cloned” UK trade mark registration, for the same mark and covering the same goods and services. The new UK registration will not be examined again. Furthermore, the owner of a UK Trade Mark registration will no longer be able to rely upon that right to oppose the registration of the same mark as an EU Trade Mark.

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N. What happens to an EU Trade Mark application that is pending on the day the transition period ends?

If you have an EU Trade Mark application that is still pending on 1 January 2021 you will need to apply to register a comparable UK trade mark in the 9 months after 1 January 2021. Your comparable UK trade mark will retain the earlier filing date of the pending EU Trade Mark and you will be able to claim any priority you had on the pending EU application, along with any UK seniority claims recorded against it. The comparable UK application will undergo examination from UKIPO.

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O. Should I begin to consider changes to my EU Trade Mark protection strategy?

EU Trade Mark applications filed during the transition period can be converted into comparable UK applications, therefore no major changes to your EU Trade Mark Protection strategy are required. From 2021, if you wish to obtain trade mark protection in the UK you should necessarily budget for a UK national application.

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P. During the transition period, does my Registered Community Design still protect my design in the UK?

Yes – in practice, for the time being, nothing has changed; while the UK is no longer a member of the European Union, EU-wide IP rights are still protected in the UK under existing rules until 31 December 2020.

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Q. How will the UK’s departure from the EU impact upon the scope of protection enjoyed by my Registered and Unregistered Community Designs?

At the end of the transition period, Registered Community Designs, as well as Unregistered Community designs, will no longer be valid in the UK but these rights will be immediately and automatically replaced by UK rights. If you have a Registered Community Design application that is still pending on 1 January 2021 you will need to apply to register a comparable UK Registered Design in the 9 months after 1 January 2021. Your comparable UK Registered Design will retain the earlier filing date of the pending “Community” (EU) application and you will be able to claim any priority you had on the pending EU application. The comparable UK application will undergo examination from UKIPO.

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R. When the UK leaves the EU, will I need to file more than one design application?

Yes – separate UK and EU design applications will need to be filed in order to ensure protection across both territories, if that is what is required.

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S. Do I need to change my patent attorney to someone who is based in the EU to file and prosecute European patents?

No – the European Patent Convention is separate from the European Union and the European Patent Office is not an EU institution. The EPC has always had wider coverage than the EU. Your UK based European patent attorneys will, therefore, continue to be able to represent you before the EPO now and post Brexit. This will not be dependent on the outcome of any renegotiation of the UK’s relationship with Europe.

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T. Following the end of the transition period, will I need to change my trade mark attorney to someone who is based in the European Economic Area (EEA) in order to file EU Trade Mark applications?

The continuation of UK Nationals' rights to represent applicants before the EU intellectual property office (EUIPO) will be determined by the outcome of any trade agreement agreed by 31 December 2020. However, we at WP Thompson are working with an EU national qualified to act before the EU IP to represent our clients at the IPO in all relevant matters. As a consultant, they will be a part of our firm and consequently we will be able to maintain our high levels of service and existing fee structure. Therefore, our clients will see a smooth continuation of the service we provide in relation to the services before the EU IPO.

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