BREXIT AND IP – LAW SOCIETY NOTE CALLS FOR GOVERNMENT ACTION

The exact mechanics of how Brexit will materialise and what it would mean for intellectual property rights in the UK is still unclear. However, time is now running short and the main representative bodies for IP practitioners have become concerned that IP rights (which are some of the assets most likely to be adversely impacted by Brexit - indeed in some cases at risk of being lost without specific provision being made by the UK Government prior to Brexit) have not been receiving the attention they require.

On 22 December, a note was sent to the UK Government by the Law Society which had been contributed to and signed by representatives of the IP Committee of the Law Society of England and Wales, and of the IP Bar Association, the Chartered Institute of Patent Attorneys (CIPA), the Chartered Institute of Trade Mark Attorneys (ITMA) and the IP Federation (whose website also carries a copy of the note).

The note makes the case for the UK as a key IP forum and identifies "a short list of the biggest areas where Government action is necessary to ensure continuity and certainty of IP law and to prevent disruption both to undertakings which use IP services and IP service providers".

The following are some of the key recommendations made by the note:

• Continuation of EU-derived IP rights: The Government should seek to negotiate a package of rights to secure the continuation of all existing substantive and procedural pan-European rights and defences to them. If this is not achievable, the government should legislate for the automatic continuation in the UK of EU rights. "The government will, in either case, need to negotiate with the EU to ensure ongoing cooperation and data sharing between the agencies responsible. It is important that this negotiation is not held up pending other discussions concerning Brexit and that there is rapid effective communication between the relevant agencies including the UKIPO, EUIPO and others to this end."
• Unitary Patent / Unified Patent Court Agreement: The note asserts that the Government should provide legal certainty regarding the UPC, and now do the following: (a) confirm that it is the UK's intention to stay in the UPC, and that the UK is prepared to abide by the terms of the UPC Agreement, following Brexit; (b) work towards the coming into effect of the UPC as soon as reasonably practicable in collaboration with other UPC Member States; and (c) work with other UPC Member States and EU institutions to ensure there are no legal or practical obstacles to UK participation in the UPC and the Unitary Patent, following Brexit, on equal terms with other Member States. "The objectives should be (i) continuation of the Court in London; (ii) continued involvement of UK national judges; and (iii) continued rights of participation of legal professionals qualified and based in the UK in all parts of the Court’s procedures on the same terms".
• Exhaustion of rights: The note suggests that "Industry needs to know what exhaustion rules will apply, post-Brexit, to goods first placed on the market: in the UK, in the EU, the EEA or internationally". It asserts that in the interests of legal certainty for UK industry and consumers, the government should consult widely, decide upon and publicise its position on exhaustion of rights. It is suggested that "the Government should make it clear that, in the interim, the current regime will continue, and that the position would be reciprocated throughout the EEA". The note concludes by saying that there are other IP issues but these are the most significant and most in need of urgent action but that others are being dealt with under the main Brexit negotiations (see following quote, emphasis added): "There are many other important points of detail in the field of IP that will need to be negotiated and resolved as part of Brexit and we understand that the UKIPO is working on many of them. The volume of work involved to deal with these matters indicates to us the importance of a transitional period in which to negotiate them with the rest of the EU. Bearing in mind the time it has taken to establish some of the international treaties and laws in the field of IP, we think the necessary transitional period is likely to be several years. We have highlighted the areas above of greatest impact for the approach to be taken by the Ministry of Justice."

As this note suggests, 2018 will be a key year for the protection of IP rights across Europe. It is not just UK entities that may lose rights, other EU businesses holding rights defined as applying across "the EU" will find that they no longer have coverage in the UK.

For further analysis of the impact of Brexit on IP rights and how to moderate this see the IP section of the Brexit Legal Guide in the Brexit hub of our website https://www.herbertsmithfreehills.com/latest-thinking/hubs/brexit.

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