It could almost be forgotten in the midst of the 2020 turmoil, but the end of the year is rapidly approaching and so is Brexit. Although this will not have an immediate impact on the validity of European patents in the UK, it will have a knock-on effect for entrepreneurs with European Community design rights on the other side of the Channel. What kind of things are going to change and what do you need to watch out for?
To answer that question, it is good to distinguish between two different groups. There is a group that will already have European Community design rights on 31 December, and there is a group that wants to apply for design rights in the New Year.
Designs from before 2021
All European Community design rights that have already been applied for, granted and published by 31 December will automatically be split into a European Community design right and a UK design right on 1 January. You will not need to pay anything extra for this and both design rights will remain valid for the same amount of time (i.e. five years from when the last renewal fee was paid). It is also good to know that in the UK the primary objective is to assess the scope of protection from a European perspective. In other words, the protection that this UK design right is going to provide will, for the time being, remain comparable to the European one.
In practical terms, a UK country code and an additional number 9 will be placed in front of your current European Community design number, and that will be the end of the matter for the duration of your current protection. However, as soon as that protection comes to an end, you will be faced with an important decision. If you want to retain design rights both in the European Community and the UK, you will have to pay separate renewal fees for each of them.
New designs from 2021 onwards
Unlike a European patent, which will remain in force in the UK after Brexit because it continues to be part of the European Patent Convention, European design rights will only remain valid for Member States of the European Community from 1 January. This means that for new design rights you will have to submit a separate design application in the UK from 1 January, with a separate payment for filing and renewal.
If, therefore, you have an innovation of which you want to protect the external design with a design right in the coming year, it is worth asking yourself to what extent protection in the UK is of interest to you. It raises the same question as when you decide on protection in other countries outside the European Community: is protection of your intellectual property in that country worth the extra investment? When considering this, it is worth remembering that this investment would be a lot less for design protection than it is for patent protection. The costs of filing and renewing design rights are still a lot lower.
When it comes to the protection of design rights, deferred publications play a special role. You can apply for these for various reasons, but in concrete terms, it means that there are entrepreneurs who have filed a design application which is not published for up to 30 months after that filing. If the European design is filed before the end of the year and is not published until after 1 January, the same rule will apply as for designs filed after 1 January. You will therefore need to pay both double application and renewal fees.
Want to find out more?
If you have any questions about your current design protection or if you would like to know how and when you should apply for such protection in the coming period, please contact me or Rudi Riemens. We can help you make the right decisions and thus hopefully contribute to a good start of the New Year. I think we can all do with that!