Does Brexit (or the end of the transition period) change the validation of European Patents in the United Kingdom?

As published on 23 November 2020 by UK IPO (Intellectual Property Office), a UK Government Brexit transition guidance website states that:

„The transition period relating to the UK’s exit from the EU ends on the 31 December 2020. During this time, if you file a patent, trade mark or design application you must provide an address in the UK (which for these purposes includes the Isle of Man), Channel Islands or the European Economic Area (EEA). If an application does not contain an address in these areas then we cannot process the case until you provide us with one.

Subject to legislative implementation, on 1 January 2021 the UK IPO’s rules on address for service will change. From 1 January 2021 you will need an address in the UK, Gibraltar or the Channel Islands before we consider your application. This means we will no longer accept addresses in the EEA. The changes will also affect other procedures relating to existing rights which are set out below.

You will not need to change your address for service if you already own a registered trade mark, design or patent, except in the scenarios below.

We are not changing the way we process any of our forms or changing any procedures. The change requires you to provide us with a UK, Gibraltar or Channel Islands address for service where we would have previously accepted an address in the EEA. We will continue to accept the Isle of Man as a valid address for service.“

[emphasis added by the author]

At first sight, you might think that validations in the UK are no longer possible to conduct with a continental address only, say, in France, Italy or Germany. However, this seems not to be true.

First, there is indeed (or will be by the end of this month) a change, according to a new version of Rule 103 of The Patents Rules 2007, in the national UK legislation regarding the address for service, namely that an address for service of a representative in “another EEA State” (such as, e.g., France, Italy or Germany) is no longer accepted by the UK IPO.

This corresponds to what the Brexit transition guidance website states as:

“From 1 January 2021 if you wish to appoint a representative, they will need to have an address in the UK, Gibraltar or the Channel Islands.”

However, for validation purposes (only) of European Patents – even after 1 January 2021 (!) – there is still no need to appoint a representative, and, hence, to provide an address for service in the UK (or Gibraltar or the Channel Islands).

This stems from the fact that a patent proprietor of a European Patent – according to national UK law – is not required to appoint a national representative (for validation purposes only) in the UK, irrespective of whether the European Patent is (or as been) granted in 2020 or will be granted after 1 January 2021. This is in accordance with the information provided by the EPO regarding the national law relating to the EPC with respect to the UK, where point 3 states that no national professional representative needs to be appointed.

This is also in line with the following statement of the Brexit transition guidance website:

“Granted European Patents which designate the UK are transferred onto the UK Register automatically. No validation is required. They are transferred with the applicant’s details only, as the UK IPO must have authorisation (Appointment or change or agent – Form 51) before it can recognise any representative […but for validation purposes only, a national representative in the UK is not mandatory…]. This is current practice and will not change.”

[comment added by the author]

Thilo Schwöbel
Diplom-Physiker, Ingénieur diplômé (ENSPG, Phelma)
German and European Patent and Trademark Attorney, Diplômé CEIPI