By Hugh Dunlop

 

Although it is widely expected that the UK and the EU will reach some sort of a deal over Britain’s exit from the EU, the UK Government has committed to prepare for a possible “hard Brexit”, that is to say departure with minimal agreed trade terms or with no agreement at all after 29 March 2019.

 

As part of this preparation, the UK Government has published a set of guidance notes on trading generally with the EU if there is no Brexit deal, and on how intellectual property rights would be affected.

 

We draw our clients’ attention in particular to four notices:

 

• Patents if there’s no Brexit deal

• Trade marks and designs if there’s no Brexit deal

• Copyright if there’s no Brexit deal and

• Exhaustion of intellectual property rights if there’s no Brexit deal

 

We have already written about what has, so far, been agreed between the UK and Europe in the draft withdrawal agreement (if it is ever signed). See here.

 

Guidance notices published on 25 March 2018 set out the UK Government’s position that much of what has been agreed will be implemented unilaterally on the UK side in the event of no agreement.

 

Patents & SPCs – no change

 

There are only a few areas of UK patent law that come from EU legislation and these have, almost without exception, been incorporated in the existing legislation or been incorporated by the EU Withdrawal Act 2018.

 

• The conditions for patenting biotechnological inventions will remain in place.
• For compulsory licensing, UK, EU or third country businesses as holders of patents or plant variety rights in the UK will continue to be able to apply for a compulsory licence, where there is an overlap between the rights.
• UK, EU and third country businesses will continue to be able to obtain a compulsory licence for manufacturing a patented medicine to meet a specific health need in a developing country.
• For pharmaceutical product testing, UK, EU or third country businesses can continue to rely on the exceptions from patent infringement provided for various studies, trials and tests carried out on a pharmaceutical product.

 

And do not be confused - the European Patent Office, is an extra-governmental body outside the EU (extending to non-EU states like Turkey and Switzerland) and is unaffected by Brexit. European Patent Attorneys based in the UK will continue to be able to represent applicants before the EPO.

 

Legal professional privilege is given to patent attorneys registered in the UK and to those intellectual property representatives who are not based in the UK, but are on the ‘list of representatives’ for the EPO, reflecting the geographical area covered by the European Patent Convention (a non-EU international agreement). All Maucher Jenkins European Patent Attorneys are on that list and enjoy that privilege.

 

Trade Marks and Designs – very little change

 

The UK government will ensure that the property rights in all existing registered EU trade marks and registered Community designs will continue to be protected and to be enforceable in the UK by providing an equivalent trade mark or design registered in the UK, including those filed through the Madrid and Hague systems which designate the EU.

 

Those having an existing EU trade mark or registered Community design will have, with minimal administrative burden, a new UK equivalent right granted that will come into force at the point of the UK’s exit from the EU. The trade mark or design will then be treated as if it had been applied for and registered under UK law. These trade marks and designs:

 

• will be subject to renewal in the UK

• can form the basis for proceedings before the UK Courts and the Intellectual Property Office’s Tribunal

• can be assigned and licensed independently from the EU right.

 

At Maucher Jenkins, we are particularly advantageously positioned to continue to represent clients for UK and EU trade marks and designs though our London and Munich offices. Many of our Trade Marks team who enjoy rights of audience before the EUIPO in both offices will continue to do so.

 

Copyright – very little change

 

The UK is and will continue to be a member of the main international treaties on copyright. The scope of protection for copyright works in the UK and for UK works abroad will remain largely unchanged. The EU Directives and Regulations on copyright and related rights will be preserved in UK law as set out in the EU Withdrawal Act 2018. The UK government undertakes to ensure the retained law can operate effectively.

 

EU cross-border copyright mechanisms will cease. On exit, the UK will be treated by the EU and EEA as a third country and the reciprocal element of these mechanisms will cease to apply to the UK. The guidance note explains what this means for:

 

• Sui generis database rights
• Portability of online content service.
• Country-of-origin principle for copyright clearance in satellite broadcasting.
• Orphan works
• Collective management of copyright and
• Cross-border transfer of accessible format copies of copyright works.

 

Exhaustion of intellectual property rights – no change for importers, but exporters beware

 

The UK Government says it will “continue to recognise the EEA regional exhaustion regime from exit day to provide continuity in the immediate term for businesses and consumers.” There will be no change to the rules affecting imports of goods into the UK, and businesses that undertake this activity may continue unaffected.

 

There may however be restrictions on the parallel import of goods from the UK to the EEA and businesses undertaking such activities may need to check with EU right holders to see if permission is needed. This is the subject of a separate paper being published by our Hugh Dunlop and Mark Webster.

 

You can find this article and others in our Patent Issues Newsletter Spring 2019.