Intellectual Property Rights and Brexit: A Searcher’s Viewpoint

Sep 29, 2016

We are very happy to extend a warm welcome to Stephen Adams, our guest blogger. Stephen is the Managing Director at Magister Ltd., an independent consultancy which provides a range of services to the scientific and technical information community, concentrating in the field of patents documentation. For more on Stephen, please see below.

Background

The national referendum in the United Kingdom on continued membership of the European Union (EU) was held on 23rd June 2016, and resulted in a narrow majority (52%-48%) in favor of leaving the Union. Until the formal procedure of negotiating the terms of withdrawal is concluded, the UK remains within the EU; the actual withdrawal date is likely to be some years ahead. Any effects in the field of intellectual property will depend entirely upon whether the UK has existing domestic legislation in place, or has been reliant upon EU-made law for any aspects of IP within its territory. We can break the subject into three sections, and review each in turn.

Current UK Law Independent of EU Law

If the current UK law (or international law effective in the UK) is independent of the EU, there will be no change in operation. This means that:

Patent filings under the Paris Convention will be unaffected.
The operation of the Patent Cooperation Treaty with respect to the UK is unaffected, including entry to regional phase at the European Patent Office (EPO).
All actions before the EPO relating to new or pending applications are unaffected, since the EPO is not an EU institution but governed by its own body of law, the European Patent Convention.
There will be no change in the granting or post-grant procedures for patents issued by the EPO and designating the UK, either before or after the exit date.
The UK maintains full membership of the EPO.
The trilingual language regime at the EPO is unaffected.

Current UK Law Is Based Upon or Replaced by EU Law

There are 5 broad areas of EU law covering intellectual property rights. There will be some impact upon existing rights granted under these laws after the UK exit. It will also change the options available for future applicants. These areas are:

The EU Trade Mark (EUTM) and the Registered Community Design (RCD), both granted by the EU Intellectual Property Office (EUIPO) based in Alicante, Spain.
The Community Plant Variety Right (CPVR), granted by the Community Plant Variety Office (CPVO) based in Angers, France.
The EU system of Geographical Indications, administered by the European Commission in Brussels, Belgium.
The EU Regulations on Supplementary Protection Certificates (SPCs), granting term extension to patents for pharmaceuticals and agrochemicals, administered at the national level.

Once the UK legally exits the EU, any existing IP rights granted by the EU institutions (EUIPO, CPVO) will cease to be valid in the UK. Owners of these rights will have to take steps to apply for a corresponding national right in the UK. The exact mechanism of this process is unknown at present. The existing rights may cease immediately on exit, or it may be deferred until the next renewal fee becomes due. It may be a simple matter of re-registering the EU right as a UK right, or a complete new application to the relevant UK authority may be needed.

The UK exit from the EU will probably not have an immediate effect upon SPCs, because they are not granted by an EU institution but by national authorities (in the case of the UK, by the UK Intellectual Property Office, UKIPO). However, there could be an impact on the future SPC regime in the UK. The cessation of the EU Regulations will give the UK government the opportunity to bring in new domestic legislation on a different basis, perhaps changing which patent protection and/or marketing authorizations constitute a valid criterion for the grant of the term extension.

The situation is a little clearer for future (post-exit) applications to any of the EU institutions. Any rights (EUTM or RCD) granted by the EUIPO in Alicante will not have effect in the UK; applicants seeking trade mark or design protection in the UK will have to apply separately at the UKIPO. Any applicants designating the EU (code ‘EM’) under the Hague Agreement or Madrid Protocol systems will obtain rights valid in the remaining 27 EU states only. Similarly, CPVRs will only have effect in the remaining EU states, not the UK. A UK-based applicant for a geographical indication will still be eligible to register at the European Commission, but will be treated as a ‘non-EU’ applicant and be unable to use the official EU logo.

Pending EU Law Likely to Be Affected by Brexit

The Unitary Patent project and the proposed Unified Patent Court (UPC) are intimately linked to the EU. The procedures for the grant of unitary effect are controlled by two Regulations (already in force), whilst the formation and procedure of the UPC is laid out in an EU Act. The UK’s future actions are key to the commencement of the entire scheme.

The terms for entry into force of the UPC Agreement – the final piece of the jigsaw – are laid out in Art. 89(1). They include a condition that the UK, in its capacity as an EU member state, must be one of three compulsory ratifiers. In other words, unless the UK ratifies the UPC Agreement before it leaves the EU, neither the Agreement nor the granting process can commence operation.

The options going forward seem to be:

The UK ratifies the UPC Agreement before formally leaving the EU; the system starts operating as originally envisaged, but subsequently the UK will drop out of the system and become equivalent to any other non-EU EPO member state.
The remaining EU states agree a modification/re-interpretation of the UPC Art. 89, probably defining Italy or the Netherlands as the compulsory third ratifier, and the system starts operation without the UK; proprietors would be able to obtain unitary effect only for the remaining EU states which have ratified the UPC.
The remaining EU states abandon this structure and bring in an entirely new (set of) Regulation(s) after the UK has left the EU.

In terms of record-keeping, the UK exit will have an impact upon which registers are authoritative concerning rights granted by the EPO. If the unitary effect registration system commences without the UK, the proposed “unitary patent” section of the EPO Register will cease to be relevant in determining whether rights have entered into force in the UK. Instead, the user will have to refer to the UKIPO register, as indeed they do now under the ‘classical’ EPO validation system.

What Lies Ahead?

Many commentators have pointed out that IP is unlikely to be top of the negotiating priority list. However, there are some grounds for believing that the way forward can be navigated without too much pain. When the USSR disintegrated in 1991, patents were successfully re-registered in the new states without loss of rights. After the Republic of Moldova renounced the Eurasian Patent Convention, it negotiated an arrangement allowing granted Eurasian patents to remain in force on its territory. Even in the trade mark arena, the partition of Ireland in 1921 led to new legislation allowing owners of existing UK trade marks to re-register their rights in the newly independent state. There will be much work for the lawyers in the years ahead.

About Stephen Adams

Stephen Adams is the Managing Director at Magister Ltd., an independent consultancy which provides a range of services to the scientific and technical information community, concentrating in the field of patents documentation. Before founding Magister Ltd in 1997, he worked for the UK Ministry of Agriculture, Fisheries & Food, later for Pira International, and was the principal patent searcher for ICI Agrochemicals (later Zeneca Agrochemicals). Stephen has a B.Sc. degree in Chemistry, and an M.Sc. in Information Science from The City University, London, UK.

Stephen is also on the editorial board of World Patent Information, The International Journal for Industrial Property Documentation, Information, Classification and Statistics.