Don’t risk losing your UK cloned design rights post-Brexit

When the transition period for the UK’s exit from the EU ended on 1 January 2021, registered European Community registered designs were no longer valid in the UK. The UK rights were automatically replaced by UK registered designs.

A separate renewal fee is payable for each re-registered UK design in addition to the corresponding European Community registered designs. The re-registered UK design retains the existing renewal date of the corresponding European Community registered design. Both UK and EU designs are renewable every 5 years, up to a maximum of 25 years. The respective fees are due to IPO and to EUIPO.

We have seen that the change in regime has resulted in the inadvertent lapse of some UK cloned rights. Possible new causes for design proprietors not to pay the fees due in the UK include:

  • They were not aware of the change and did not know separate arrangements had to be made in the UK.
  • Their in-house systems for maintaining renewals were not updated to reflect the cloned UK matter.
  • An EU attorney handled their community designs and did not make arrangements for a UK address for service.
  • The proprietor has outside counsel in the US, who instruct an EU attorney, who instruct a UK attorney, resulting in a long chain of responsibility with unnecessary points of failure.

In view of our recent experiences, we suggest that instructing counsel review their in-house systems to ensure that UK cloned designs are separately recorded and consider consolidating their UK/EU addresses for service to improve portfolio efficiency and reduce the possibility of miscommunication.

Traditionally, European firms have passed restoration issues on to an attorney with a background in the subject matter of the patent or design right. The only problem is, while they will understand the technology of the patent, they may not regularly deal with restoration issues.

This means they are unlikely to have much experience navigating the restoration procedure.

To simplify and improve our approach to re-establishment of rights, we have created a dedicated team of attorneys with a specialist focus on the nuances and peculiarities of the restoration process. Our partners in the team have substantial experience advising on restoration procedures at the UK IPO. Via this team, we offer a best-in-class service for recovering inadvertently lost UK design rights following the UK leaving the EU.

To make things even easier, as our firm has offices in the UK and EU, we can act for both UK and community designs as well as providing a coordinated monitoring and renewal service for both types of rights if required and the ability to immediately help if your review determines that UK rights have inadvertently been allowed to lapse because the new UK matter has not been docketed in addition to the community design.

If you would like to discuss how we can help you reduce the risk of losing your UK cloned design rights, please contact us today and we will put you in touch with your specialist restorations team.