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IP Planning for Brexit


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These are the slides and handout for a talk that I gave in London to some 25 specialist solicitors, patent and trade mark attorneys on 7 Dec 2016.

As the PM has indicated that she will give 2 years notice of withdrawal from the EU by the end of March 2017 businesses have a very limited time to devise prosecution, licensing and enforcement strategies for the UK and the remaining member states.

I have discussed 5 main topics:
1. Why discuss this topic at all until we know more about the terms of our departure;
2. Our present IP framework that consists of a mixture of statutes (some of which implement directives) and EU regulations;
3. How IP law is likely to develop in the 2 years notice period;
4. What is likely to happen to trade marks, designs, geographical indications and the unitary patent and UPC on Brexit and how it is likely to affect particular industries; and
5, Tips for IP planning

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IP Planning for Brexit

  1. 1. IP Planning for Brexit Jane Lambert 4-5 Gray’s Inn Square Wednesday, 7 Dec 2016
  2. 2. IP Planning for Brexit • Why bother to talk about the topic at all? • The current IP framework • Likely developments over the notice period • Possible consequences at the end of the notice period • Tips for IP planning
  3. 3. Why bother to discuss the topic at all? • HMG has indicated that it will give notice of withdrawal by 31.03.2017 • Notice period will expire no later than 31.03.2019 unless extended by agreement after which treaties will cease to apply • Notice period is shorter than even unregistered Community design right and the length of time many IP actions are disposed of
  4. 4. Why bother to discuss the topic at all? • UK will continue to trade with and invest in EU and EU member states will continue to trade with and invest in UK. • At least some legal consequences of Brexit can be anticipated (albeit provisionally) whether we enter a withdrawal agreement or not and regardless of the terms of such agreement.
  5. 5. The Current IP Framework • Maintaining minimum levels of legal protection for brands, designs, technology and creative works has been a condition of access to the world’s richest markets since 1994 • EU is party to the WTO Agreement that guarantees such access • EU directs member states to comply with the WTO Agreement, TRIPs and treaties
  6. 6. The Current IP Framework • EU also seeks to harmonize national law to achieve treaty objectives such as free movement of goods and services • Businesses in UK can rely on a mixture of EU and national laws to protect investment in branding, design, technology and creativity • Rights under these laws are ultimately adjudicated by CJEU
  7. 7. The Current IP Framework • National and EU IP rights are balanced by other rights such as those arising under arts 101 and 102 of the TFEU • Disputes between member states over judgments and jurisdiction are determined by Brussels Convention which is now enforced by regulation • A similar convention exists with Switzerland
  8. 8. Likely Developments in Notice Period • The UPC agreement will be come into force when ratified by UK and Germany • The Trade Secrets Directive will come into force • Further work will be done on the development of digital single market
  9. 9. Ratification of UPC Agreement • On 28 Nov 2016 Lady Neville-Rolfe indicated that HMG would ratify the UPC Agreement • HMG has always favoured an EU wide patent: – One of the few countries to ratify the Community Patent Convention – Hargreaves report recommended UK’s accession in 2011 – HMG signed the UPC agreement in 2013
  10. 10. Ratification of UPC Agreement • HMG has leased premises for the court • Probably in the interests of British businesses for the court to take off even if UK has to withdraw from it in 2019 • Primary legislation passed and Order in Council drafted in 2014 • Good chance Court will open in 2017 or 2018
  11. 11. Trade Secrets Directive • Trade Secrets Directive adopted shortly before the referendum • Has to come into force in June 2018 • Great opportunity to codify trade secrets law in UK which is anomalous, complex and uncertain
  12. 12. Digital Single Market • No specific proposals yet but likely to require further harmonization of national copyright law • Creative, financial and perhaps other service industries will benefit from digital single market
  13. 13. Consequences of Withdrawal • Treaties fall away and with them EU regulations • Some or all of the regulations may be adopted under the “Great Repeal Bill” • Some rights such as unregistered Community designs, guarantees of origin for British food and beverages and SPCs will disappear though equivalents could be adopted
  14. 14. Consequences of Withdrawal • Chancery Division and County Court will cease to be EU trade mark and Community design courts • UK will fall outside jurisdiction of other states EU trade mark and Community design courts • CJEU will cease to have jurisdiction over UK though judgments are likely to have persuasive authority on legislation derived from directives
  15. 15. Consequences of Withdrawal • UK will have to withdraw from UPC and London will cease to host the central division • Richard Gordon QC and Tom Pascoe suggest it might be possible to modify UPC agreement but unlikely • Optional protocol to EPC abandoned because of incompatibility with EU law
  16. 16. Effect on different industries • Agriculture • Fashion • Financial Services • Information and communications technology • Manufacturing
  17. 17. Opportunities from Brexit? • CIPA suggests that it might be possible to apply the Nagoya Protocol on biodiversity in a way that does not harm academic and commercial research in UK • ACID has suggested a right equivalent to an unregistered Community design right but fir a much longer term • Incentive to develop new markets outside EU
  18. 18. Tips for IP Planning • IP plan should be part of a business plan • Businesses should already be applying following methodology – Identifying income streams over business planning period – Considering threats to income streams – Devising counter-measures – Providing funding for counter-measures
  19. 19. Tips for IP Planning • Disappearance of EU rights such as EU TM likely to be taken into account when devising counter-measures • Follow withdrawal negotiations closely, particularly in so far as they affect your clients’ industry • Be astute for any opportunities that may arise whether in UK, Europe or beyond
  20. 20. Withdrawal from EU not the end of the world • Korea and Israel show that it is possible for medium size countries to thrive outside trade blocs • New technologies may make geographical proximity less important • Read and follow @nipclaw for further developments
  21. 21. Any Questions Jane Lambert 4-5 Gray’s Inn Square London WC1R 5AH +44 (0)20 7404 5252 @nipclaw