Tuesday, 9 January 2018

IP and Brexit - Key Requests to HMG

Jane Lambert

On 17 Dec 2017 Daniel Alexander QC, Chair of the Intellectual Property Bar Association, together with the Chair of the IP Law Committee of the Law Society of England and Wales and the Presidents of the Chartered Institute of Patent Attorneys, the Chartered Institute of Trade Mark Attorneys ("CIPA") and the IP Federation, signed a memorandum to the Government entitled Intellectual property (IP) law and Brexit Summary of main requests for the UK government a copy of which can be downloaded from the CIPA website (see IP and Brexit - Key Requests to Government). The signatories to that memorandum represent most IP practitioners in the United Kingdom.

Mr Alexander and his fellow signatories stressed that IP matters to the United Kingdom:
"The UK economy includes successful businesses and organisations operating internationally for which IP is important. Many IP-dependent organisations operate on a regional, or global basis, rather than at a purely UK level. For example, a company may coordinate its European patent or trade mark filing strategy from one key jurisdiction; IP licences are often granted for the whole of the EU; and parties in dispute over IP rights may bring a test case in a leading EU jurisdiction such as the UK, the outcome of which may be commercially persuasive in getting the parties to reach a settlement across the whole of the EU. The UK is at the heart of this and has been for many years."
This country is a strong provider of IP services, whether in the areas of protecting intellectual assets, enforcing Intellectual property rights through litigation, or commercializing the products and services that are protected by IP, and it is of clear benefit to the UK economy for that to continue unimpeded.

In order for it to do so Mr Alexander and the other signatories urged Her Majesty's government to negotiate a package of rights to secure the continuation of all existing substantive and procedural pan-European rights and defences to them. In other words,  the legislation providing for EU trade marks, registered Community designs, unregistered Community design right, database rights, artists’ resale rights, supplementary protection certificates, indicators of geographical origin, and plant breeders’ rights should continue to apply to the UK, designated courts in the UK should continue to be EU trade mark and Community design courts, the orders of EU trade mark and Community design courts in other countries should continue to apply to this country and there should continue to be a right to refer questions of EU law to the Court of Justice of the European Union. 

If that is not achievable, Mr Alexander and his colleagues advised HMG to legislate for the automatic continuation in the UK of EU intellectual property rights. That might include, for example, the introduction of domestic UK rights (to the extent they do not already exist) that are equivalent to the EU rights, such as unregistered Community designs and protection for geographical indicators as well as protecting  EU trade marks, registered Community designs and supplementary protection certificates in the UK by Act of Parliament.

The memorandum reminds the government that the Unified Patent Court ("UPC") is one of the most significant developments in IP dispute resolution of recent years, that the UK is central to the project, that HMG has devoted significant financial and human resources to its development and that the participation of British judges and lawyers is widely regarded as critical to the UPC, For those reasons the Agreement on a Unified Patent Court provides for the section of the Central Division of the Court of First Instance dealing with, inter alia, life sciences and chemistry, to be based in London which will benefit of British industry as well as the legal profession.  The government is asked to conform its intention to remain party to the UPC Agreement after Brexit and to work with other parties to the UPC Agreement to implement its provisions as soon as possible and make sure there are no legal or practical obstacles to British participation in the UPC and the unitary patent after Brexit. The government should negotiate the continuation of the UPC in London, continued involvement of British judges and continued rights of participation of legal professionals qualified and based in the UK in all parts of the Court’s procedures and on the same terms.

Other priorities urged by Mr Alexander and the others is the preservation of the doctrine of the exhaustion of rights even if we leave the single market and customs union, the rights of representation of British lawyers and patent and trade mark attorneys before the Court of Justice of the European Union, the General Court and the EU Intellectual Property Office and the mutual recognition of judgments and jurisdiction that presently exists under the Brussels and Lugano Conventions.

Anyone wishing to discuss this memorandum or Brexit in general should call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

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