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On 23 June 2016, the UK carried out a referendum on its membership of the European Union (EU), and the public’s decision was that the UK should leave the EU. This note is to answer some of the initial questions that arise and to provide an update on the likely consequences.

The first point to note is that no urgent action is needed. The UK’s exit from the EU (or “Brexit”) is not imminent. At least a two year negotiation period will follow the UK giving notice under Article 50 of the Lisbon Treaty, which the UK Government intends to do in March 2017. During this time, UK patent attorneys and registered trade mark attorneys will continue providing all of the services we currently provide, and IP owners will not lose any IP rights or any access to EU IP registration systems.

UK Government indications about IP since the referendum

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On 28 November 2016 the then UK Minister of State for Intellectual Property, Baroness Neville Rolfe announced that the UK Government confirmed that it is proceeding with preparations to ratify the Unified Patent Court Agreement.  This announcement was made in the context of the Prime Minister stating that the UK would continue to play a full and active role in the EU for as long as it is a member.  However, it also noted that the decision to proceed should not be seen as pre-empting the UK’s objectives or position in Brexit negotiations with the EU.

On 14 December the UK’s deputy permanent representative to the EU signed the Protocol on Privileges and Immunities of the Unified Patents Court.  This step and the statement regarding ratification can be taken as strong indicators that the UK will be a part of the UPC.  However, the stated aim of the UK Government to end the jurisdiction of the Court of Justice of the European Union (CJEU) in the UK, which forms point number 2 of the 12-point plan in the white paper (see below), is at odds with the UK remaining part fo the UPC system post-Brexit

On 2 February 2017 the UK Government issued a Brexit white paper, which contains details of the 12-point plan that the Government proposes to adopt in Brexit negotiations with the EU.  There were three references to Intellectual Property in the white paper, these were:

• The inclusion of a statement that “EU-wide systems facilitate the protection of intellectual property” in a section addressing the desire to ensure free trade with European markets. This is placed under the sub-heading “cross-cutting regulations”, and the full paragraph 8.36 is set out here:

A range of cross-cutting regulations underpin the provision and high standards of goods and services, maintaining a positive environment for businesses, investors and consumers. For example, a common competition and consumer protection framework deals with mergers, monopolies and anti-competitive activity and unfair trading within the EU on a consistent basis, and EU-wide systems facilitate the protection of intellectual property.

It could be seen that this is an indication that the UK will aim to continue to be part of the EU Trade Marks and Community Designs regimes post Brexit.  However, it is currently unclear how this can be reconciled with the stated aim of eliminating the jurisdiction of the CJEU from matters affecting the UK.

• Section 10 is directed to ensuring that the UK remains the best place for science and innovation. Under a sub-heading “A global leader in international collaboration” is a reference to the value of the UK’s IP market exports.  This can be understood as a clear indication of a desire to maintain the UK’s IP position and industry.  The full paragraph 10.12 is set out here:

One of the UK’s key strengths in research is international collaboration: 47.6 per cent of UK articles in 2012 were internationally co-authored – a share that has been increasing.90 With just 3.2 per cent of global research and development expenditure, the UK accounts for 6.4 per cent of articles and 15.9 per cent of the world’s most highly-cited articles.91 The UK also exported over £11 billion of intellectual property globally in 2015.

• A table indicating that IP services are the sixth largest export from the UK to the EU, a market that is worth £4bn.

Patents

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Will the Brexit affect my existing European patents?

No. The UK’s membership of the European patent organisation is independent of membership of the EU. Patent rights obtained via the European Patent Office will be unaffected, and there will be no loss of rights.

Can you still act for us in patent matters in the EU?

Yes. We will continue managing worldwide patent protection and risk assessments for all clients who require this. In particular, we will continue direct filing and prosecution of European, UK, German, and PCT patent applications. There is no question of our patent attorneys losing any right of representation at the European Patent Office (EPO), as the UK will remain a member of the European Patent Organisation.

What effect will Brexit have on the EU unitary patent and UPC?

There has already been a delay caused by Brexit to the implementation of the proposed EU unitary patent and Unified Patent Court. The UPC Preparatory Committee now expects the UPC to open in December 2017.  The timetable to that date is expected to include UK and German ratification in April 2017, with the provisional application phase starting in May 2017.  The sunrise period for registering opt-outs would then likely start sometime in summer 2017.  This currently expected timeline may change and we will be monitoring developments.

Trade Marks & Designs

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What will happen to EU trade marks and Community designs?

EU trade marks and Community designs are ‘unitary’ rights for the entire EU. When the UK separates from the EU, additional UK trade mark and design applications will be needed unless the UK government implements new legislation to allow protection of such rights to continue in the UK.

We expect the EU registration system to continue to cover the remaining 27 member states, and it is likely that there will be some option to convert the UK part into a UK national right retaining the original application date enjoyed by the EU registration. Since this will require new legislation, it is likely to take considerable time to implement. We will keep you updated on any developments.

Can you still act for us in trade mark and design matters in the EU?

Yes. We will continue to advise you on the most appropriate way to protect your trade marks and designs now that we know the Brexit is going ahead. During this transitional period we will continue to represent you before the UK IPO, the EU IPO and in the filing of International Trade Mark and Design Registrations. We will update you when it is clear what will happen after the transitional period. We also continue to maintain close relationships with a network of overseas attorneys in the remaining EU member states.

Do I need to do anything immediately in relation to my existing EU trade mark and design registrations?

No – we recommend that you continue with your existing EU registrations until we understand how the UK parts of these registrations will transition into UK national rights. National UK filings are unlikely to enhance your rights unless you have no use of a trade mark in the UK. If you are concerned about a trade mark which is used in mainland Europe but not in the UK please contact us for further advice.

If I am filing new applications, should I file UK and European applications?

This is something that you should consider and we can advise on a case by case basis on the best filing strategy.

Agreements with third parties

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What about EU-focussed agreements with third parties?

The change in composition of the EU will affect agreements which have the EU identified as their geographical territory. This will include co-existence agreements with third parties as well as licensing arrangements.

We recommend that any agreements which have the EU as their territory be reviewed as soon as possible. Consideration should be given to renegotiating their terms to ensure that they continue to cover the UK when it ceases to be an EU member state.

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As the UK progresses towards its actual exit from the EU, we will update you regularly on the effects upon IP and the best way to protect it. Please let us know if you have any questions.

We are grateful to all of our clients who have provided positive feedback and again caused us to be ranked as one of the very best London patent practices and to be recognised as having some of the best trade mark practitioners in the UK. We know you value their proactivity and thorough knowledge of your IP portfolio, and we remain fully committed to achieving your commercial objectives and IP strategy. That will never change. In fact, we have expanded our range of services and we are continuing with recruitment plans.

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Category: News, Publications | Author: Geoff Hussey | Published: February 2017 | Read more