No-deal patents and SPCs: latest government guidance - the picture is not as clear as it might at first seem
Amongst the Brexit turmoil in the UK Parliament this week, preparations are continuing on the ground for the continual protection of intellectual property whatever the eventual outcome. Here we take a brief look at the latest guidance from the government for the protection of patents and Supplementary Protection Certificates (SPCs) in the UK in the event of a no-deal Brexit.
This guidance document published on 8 March 2019 provides further clarity to business and is the latest in a series of publications from the government, following on from the no-deal trade marks guidance it published very recently (see our No-deal trade marks: latest government guidance blog for details.) It sets out the main changes to UK law if the UK leaves the EU without a deal that will be made through the Patents (Amendment) (EU Exit) Regulations 2019 (the Regulations), which it is envisaged will enter into force on exit day.
Key points to note in this latest guidance and underlying Regulations include the following:
- Current SPCs will remain in effect after exit day as anticipated.
- Pending applications for SPCs at the Intellectual Property Office (IPO) will continue to progress. Applicants of those based on authorisations from the European Medicines Agency (EMA) may need to provide the IPO with information on the equivalent converted UK authorisation. (EMA authorisations will automatically become UK marketing authorisations on exit day) .
- Future SPCs for the UK will only be granted by the UK IPO and must be based on a UK patent (either national or European GB) and a UK marketing authorisation. The application procedure will be the same and there will be no change to the fees.
- After exit day, as in other areas of law, it will no longer be possible for UK courts to make references to the CJEU for interpretation of the SPC legislation. CJEU judgments issued before exit day will continue to apply, but subsequent decisions will not be binding on the UK courts.
As we've discussed in previous blogs uncertainty still remains over the Unified Patent Court and the UK's future involvement should it come into force. (A date for the hearing of the German constitutional challenge is awaited.) In line with previous commentary from the IPO and the UK government the guidance document simply notes that "We intend to explore staying in the systems with our European partners."
Although, the guidance document and draft Regulations do not as a whole contain any surprises and provide reassurance that it will be business as usual, there are some aspects of concern. For example, while the government is keen to say that the changes will not impact on the duration of SPCs, in practice, this might not be the case. The duration of an SPC will be calculated on the basis of the first authorisation to place to the product on the market in the UK or the EEA. Many are speculating that Brexit may lead to a delay in the launch of products on the UK market relative to the rest of the EEA, with marketing authorisation for the UK coming later. In circumstances where the duration of the SPC can be determined by reference to the date of the EEA authorisation, the duration of UK SPCs could be shorter under the proposed UK regime.