Brexit: the implications for intellectual property

Following Britain leaving the European Union, EU Trade Marks, Registered and Unregistered Community Designs and Community Plant Variety Rights will cease to have effect in the UK, which will no longer be part of the EU and the Regulations under which they were granted and enforceable will no longer have force in the UK. The UK Government will need to legislate for substitute rights and appropriate transitional provisions. The same will apply to EU designations of origin and geographical indications.

However, the Government has confirmed that, in the event of a ‘no deal’ Brexit, EU Trade Marks and registered Community Design rights will be protected through the creation of new equivalent rights granted to right holders with minimal administrative burden and with an opt-out available for those who do not want to receive a new right of this kind. Individuals or corporations with pending EU Trade Mark applications when the UK exits the EU, will have 9 months to apply in the UK for the same protections. They will also be able to retain the initial EU application date as the priority date.

These equivalent trade mark and design rights:

• will be renewable in the UK
• can form the basis for proceedings before the UK Courts and the Intellectual Property Office’s Tribunal, and
• can be assigned and licensed independently from the corresponding EU right.

 Unregistered Community Design Rights (UCDRs) will continue to be enforceable in the UK in the event of a ‘no deal’ Brexit, for the remaining period of their protection. Additionally, the Government has confirmed that it will create a new ‘supplementary unregistered design right’ in the UK, which will replicate the UCDR and arise automatically. This will mean that designs disclosed after Brexit will be protected in the UK under the same terms as the UCDR.

Existing UCDRs arising from disclosure in the UK prior to Brexit, will remain valid in the remaining EU member states. Existing UCDRs will also have protection in the UK after Brexit, without further action required from the right holder. The Government has indicated that it will make provisions to settle the status of ongoing legal disputes in the UK involving UCDRs.

The UK Intellectual Property Office (IPO) will need to take over the administration of the registrations which substitute in the UK for the former EU-wide rights. The UK IPO will need to recruit the examiners and other staff to administer the greatly expanded workload.

UK lawyers, and patent and trade mark attorneys will cease to be entitled to act as professional representatives in the EU Intellectual Property Office (formerly OHIM) and Community Plant Varieties Office. The requirement that professional representatives are nationals of a Member State and have a place of business in the EU means that the IP departments of UK companies, which have hitherto dealt directly with the EU IPO, will need to restructure how they operate. They may need to relocate, replace staff or instruct external agents, in order to handle their continuing EU IPO workload. This will have significant financial and human resources implications.

Brexit will also affect the geographical scope of trade mark use. Owners of EU Trade Marks who rely wholly or substantially on use in the UK to establish genuine use in the EU in the event of a revocation claim, may find their EU-wide registrations more vulnerable to revocation for non-use after Brexit. Conversely, when the UK portion of an EU Trade Mark, which is used only outside the UK, is converted to a national registration, the national registration will similarly be vulnerable. It is not expected that the UK statute law which implements harmonised EU law in this area will be changed, although over time UK jurisprudence is likely to diverge from EU jurisprudence, since the Court of Justice and the General Court decisions will no longer bind the UK courts.

For more information on the position of trade marks and designs if there is no Brexit deal, click here.

Since the European Patent Convention is not an EU instrument, it will not be affected by Brexit and European Patents (with a UK designation) will continue to be granted by the European Patent Office and to take effect in the UK. It is expected that amendments introduced by secondary legislation under the ECA to implement EU Directives (notably the Biotech Directive) will be preserved when the ECA is repealed.

Legislation will be needed to preserve Supplementary Protection Certificates (SPCs) in the UK, when the Regulation which governs them ceases to have effect in the UK. Since UK SPCs are already granted and administered by the UK IPO, there is unlikely to be significant disruption. The Government will need to legislate for SPCs to be granted following Brexit and has indeed confirmed that in the event of a ‘no deal’ Brexit, the relevant EU legislative framework will be retained in the UK by the EU Withdrawal Act 2018. Furthermore, all other EU laws related to patents and SPCs will be retained. Although it would be possible simply to re-enact the Regulation as UK law, this may be an area for political debate, both as to the principle whether they should continue to be granted at all, and as whether the provisions should be redrafted to overcome the poor drafting of the Regulation, but this will lead to debate as to how ambiguities should be resolved (which will affect what SPCs could be granted, to whom and for what). Even if the relevant existing EU rules are adopted without amendment, over time UK jurisprudence is likely to diverge from EU jurisprudence, since the Court of Justice and the General Court decisions will no longer bind the UK courts.

The Government’s intention is that biotechnology patents/applications, compulsory licensing arrangements and infringement exceptions for studies, trials and tests of pharmaceuticals products will continue to be provided for under UK law. Patent examiners will apply the same criteria to new applications and validity will be scrutinised on currently existing grounds.

For more information on the position of patents and SPCs if there is no Brexit deal, click here.

The UPC and Unitary Patent are EU instruments. Following the referendum vote last year, discussions took place as to whether the UK could participate in the UPC and the Unitary Patent system post Brexit. Simmons & Simmons’ London Intellectual Property Group organised a consortium of the IP Federation, the Chartered Institute of Patent Attorneys and several law firms to seek an Opinion from EU constitutional law experts, Richard Gordon QC and Tom Pascoe on whether the UK would be able to continue to play a part in the UPC after leaving the EU. The Opinion found that the UK may legally remain part of the Unitary Patent Court post Brexit provided that it signs up to provisions that protect EU constitutional principles, namely the primacy of EU law and the jurisdiction of the CJEU in matters covered by the UPC agreement. The UK would need to enter into an agreement with the EU and the Member States setting out the new arrangement and the CJEU would have the final say as to the legality of such arrangements.

The UK Government announced in November 2016 that, despite the Brexit vote, it will ratify the UPC Agreement (the intergovernmental agreement signed by the UK and 25 other EU member states to create the UPC). The UPC Agreement was ratified on 26 April 2018 but it is unclear when the UPC will open and the Unitary Patent will come into effect, as the start date is dependent on Germany’s ratification. The Government has provided guidance on two scenarios involving the UPC and Unitary Patent:

• What happens if the UPC and Unitary Patent do not come into effect pre Brexit?
• What happens if the UPC and Unitary Patent come into effect pre Brexit and the UK has to withdraw from one or both systems post Brexit?

In the event of the former, there will be no changes for UK and EU business at the point of Brexit. In the latter circumstances, there would be implications for both patent protection and enforcement:

• Protection
  • Businesses will no longer be able to protect their inventions in the UK using the unified system. However, equivalent UK rights will be created in respect of existing Unitary Patents to allow for continued protection under UK law. UK and EU businesses will still have access to European Patents (designating the UK) or UK national patents, in order to protect their inventions in the UK.
  • UK businesses would be able to protect their inventions using the Unitary Patent in contracting EU countries.
• Enforcement
  • UK businesses will still be subject to the jurisdiction of the UPC for infringing the rights of Unitary Patent holders within contracting EU countries. Similarly, EU businesses will be subject to the jurisdiction of UK courts for infringing acts carried out in the UK.

The UK Government has confirmed in its White Paper on ‘The future relationship between the United Kingdom and the European Union’, published on 12 July 2018, that it will “work with other contracting States to make sure the [UPC] Agreement can continue on a firm legal basis” post Brexit.

For more information on the position of Unitary Patents and the UPC if there is no Brexit deal, click here.

Customs detention of (allegedly) infringing goods at the point of importation is an important weapon in the hands of rights-owners, not only against counterfeiters, but also in standards-based industries such as electronics and telecoms. Following the UK’s departure from the EU, there will be a border between the UK and the EU where detention of goods can take place, certainly of goods passing from the UK to the EU, but also, if successor legislation brings customs detention into UK law, of all goods entering the UK. If the UK adopts an EU-style scheme, it will be potentially very significant, as it will be almost impossible to circumvent.

This added border may affect how the market for parallel imports will develop, which is particularly affected by the rules on the exhaustion of rights. The doctrine of exhaustion of rights applies to the whole EEA, so if the UK leaves the EU but re-joins first the European Free Trade Association (EFTA), and then the EEA, the position with regard to exhaustion and parallel imports will not change. However, if the UK does not re-join the EEA, then the existing rules on exhaustion of rights will cease to apply, in which case no goods covered by UK IP rights which entered the market overseas can be parallel imported into the UK unless the rights-owner consents. This could effectively close the UK market to parallel imports. Since parallel imports compete chiefly on price with products first placed on the market in the UK, one factor restraining price inflation would be removed. This may be an area for legislation, depending on how significant the Government perceives this factor to be.

The Government has confirmed that the UK will continue to recognise the EEA regional exhaustion regime post Brexit, if there is no deal. This means that there will be no changes to the rules affecting UK imports and the IP in relation to goods (lawfully) sold in the EEA will still be considered exhausted in the UK. Practically, businesses can continue their importing activities and parallel imports can continue from the EEA.

However, IP protected goods (lawfully) sold in the UK from the EEA may not be considered exhausted in the EEA. As such, exports of goods from the UK to the EEA may see some restrictions. In this case, the Government has advised that businesses engaged in such activities may need to seek permission from EU right holders.

For more information on the position in relation to customs detention, parallel imports and exhaustion if there is no Brexit deal, click here.

The impact of a Brexit on IP licensing, particularly by major businesses, will be comparatively small. This is because licences usually cover the whole or substantial parts of Europe and need to comply with EU law (particularly competition law and the Rome choice of law rules) even if they are governed by the law of a non-EU Member State. This will only change if, in the longer term, the UK is treated by licensing businesses as an entity separate from the EU into which IP rights are licensed separately.

It would be prudent in licensing agreements to provide for the eventuality that licensed rights such as European Union Trade Marks or Registered or Unregistered Community Designs might be converted in part into national rights to which the licence will continue to apply.

The means and remedies provided for enforcing IP rights have been harmonized under the Enforcement Directive. Many of the remedies required by the Enforcement Directive were already available in UK law, and returning to the pre-Directive status quo will do little other than remove the remedy of publication of a judgment (it is questionable whether the Government would want to do this; the order for publication is already heavily circumscribed, and in cases where it is appropriate, it is desirable that it be available). The UK courts would however be spared the task of dealing with the issue that the Enforcement Directive appears to provide for damages and an account of profits as concurrent remedies.