The impact of Brexit on intellectual property Bobby
The impact of Brexit on intellectual property Bobby Smithson, Appleyard Lees Member of CIPA International Liaison Committee IN ASSOCIATION WITH
Introduction Business as usual: • • Existing UK national IP rights unaffected European patents and applications unaffected Article 50 unlikely to be triggered before year end UK is set to remain in the EU until at least 2019
Patents Business as usual: • The European Patent Convention (EPC) and the European Patent Office (EPO) are not EU institutions. • UK patent attorneys who are qualified EPAs will still be able to represent clients before the EPO. • European patent applications and granted patents unaffected.
Patents cont. • UK patent attorneys will still be able to prosecute Patent Co-operation Treaty (PCT) patent applications. • PCT patent applications unaffected • UK patents granted by the UK Intellectual Property Office (UKIPO) are unaffected
Trade marks and designs • UK trade marks and design rights unaffected. • CIPA and the Institute of Trade Mark Attorneys (ITMA) are working together to ensure that holders of EU trade marks and design rights will not lose protection • CIPA, ITMA and the UK Government are working together to ensure that UK trade mark attorneys will continue to act before the EU IPO
Trade marks and designs cont. • Mechanism for transferring UK rights under EU Trade Mark and Community design applications into UK national applications unclear. • UK will remain a member of the Paris Convention and the Madrid Agreement after Brexit. CIPA expects that the UK will continue to recognize the priority filing dates of Madrid and/or EU trade marks
Trade marks and designs cont. • CIPA expects that a transitional “non-use” period will be negotiated as part of the process for EU marks that were only used in the UK (that remain EU trade marks) and for new UK marks that were never used in the UK, prior to the effective date of Brexit. The mechanism for achieving this remains unclear but we will work with the UKIPO and other stakeholders to achieve the optimum outcome.
Trade marks and designs cont. • Consider reviewing all licence/settlement/delimitation/co-existence agreements relating to EU trademark and design registrations. There may be an impact from transitional provisions and interpretation may be a matter of contract law rather than IP law.
Trade marks and designs cont. • All existing EU unregistered design rights and Hague registrations will continue, unaffected, until Brexit. We expect the UK to enact the necessary legislation to ensure rights holders do not lose protection upon Brexit and will work with the UKIPO and other stakeholders to optimise the likelihood of this happening.
Trade secrets and data safety Business as usual: • No change for the holders of trade secrets. • UK exceeds standards specified by the EU Trade Secrets Directive. • No need for the UK to implement the directive and there may be advantages in terms of greater legal certainty from not implementing it.
Trade secrets and data safety cont. • Cyber security strategy in place since 2011 and regularly updated. • Formal data protection measures in place since 1988.
IP rights covered by EU Regulation (supplementary protection certificates, copyright and regulatory data protection) Constitutional experts believe that most EU law will be re-enacted en masse by UK Regulation. CIPA will press the Government for action including:
Supplementary protection certificates o CIPA anticipates that pending and existing SPCs will be unaffected. o Marketing Authorisation (MA) on which the time period of the SPC is based currently the first MA in the EEA. Could potentially become the first UK MA. It is possible that the UK might enact SPC rights after Brexit that are more favourable to innovator companies. The European Commission intends to study the effects of a SPC based on a Unitary Patent. The results of this study could influence UK policy as the UK is likely to still be a member of the EU when they are published.
IP rights covered by EU Regulation cont. • Regulatory data protection o RDP by the UK Medicines Act based on various EU Directives and Regulations. We expect that the UK will provide RDP at least at existing level. Major issue whether commences from the date of the first MA in the EU or the first MA in the UK. • Copyright o We anticipate that UK will protect copyright (including existing copyrights) in accordance with the Berne Convention as a minimum. There may be an opportunity to review copyright protection.
IP disputes Business as usual: • The UK has a sophisticated and highly successful litigation system, including the innovative and affordable Intellectual Property Enterprise Court (IPEC). UK court system will continue to provide a fair and balanced system for litigation post-Brexit.
IP disputes cont. • Alternative dispute resolution methods are well respected and recognised in the UK. The UK has a well-developed arbitration system and London is often chosen as the seat of international arbitration. • The UK is a signatory of a number of international conventions in relation to choice of forum and recognition of judgements and conflict of laws (for example the Hague Conventions).
IP disputes cont. • All IP professionals in the UK enjoy a high level of legal professional privilege, which allows clients to be completely open with their legal advisors.
The Unitary Patent and Unified Patent Court • The Unified Patent Court Agreement has not yet been ratified by sufficient countries for the system to come into effect. In particular, Germany and the UK need to ratify.
The Unitary Patent and Unified Patent Court cont. • CIPA has a strong preference for the UK to participate in the UP and UPC system, if a solid legal basis for this can be agreed. The UK government, assisted by CIPA and other national stakeholders, has worked tirelessly over many years to create a system favourable to the UK and business which should simplify the patent system for businesses and reduce their costs. Plans were well advanced for part of the Court’s central division to open in London.
The Unitary Patent and Unified Patent Court cont. • CIPA is working with other interested parties, including international colleagues, to optimise the chances of the UK’s continued participation.
IP transactions Business as usual: • The UK continues to be a good venue for IP transactional work, with highly qualified, skilled and experienced legal professionals. • The law of England Wales will continue to be a favourable governing law for IP transactional agreements.
Parallel imports and exhaustion of rights • The position may change following a Brexit depending on the precise arrangement reached. This is a complex area and CIPA is working with stakeholders to achieve the optimum position. • There is a possibility that a Brexit could enable a more advantageous regime for rights holders.
IP tax relief • There will be no change for companies claiming UK corporation tax relief via the Patent Box scheme on the profits they make from patented inventions. • The opportunity should exist for discussions between the UK Government and stakeholders to make the system more attractive for those investing in the UK.
For more information please contact: Chartered Institute of Patent Attorneys 95 Chancery Lane, London WC 2 A 1 DT Telephone: +44 (0) 207 405 9450 Email: [email protected] org. uk www. cipa. org. uk IN ASSOCIATION WITH