Intellectual Property Articles of the Australia-UK Free Trade Agreement: General Provisions

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Author Thomas Schoch Licence CC BY-SA 2.5  Source Wikimedia Commons

 

Jane Lambert

On 20 Dec 2021, I introduced the UK's free trade agreement with Australia.  I reported that it consists of 32 chapters and that one of those chapters (namely Chapter 15) is on intellectual property.  Chapter 15 consists of 96 articles divided into 11 sections.  I indicated that I would consider the various sections of that chapter in due course.

Today I consider Section A of the chapter which is headed "General Provisions".  It consists of the following articles:

• Art 15.1 Definitions
• Art 15.2 Objectives
• Art 15.3 Principles
• Art 15.4 Understandings
• Art 15.5 Nature and Scope of Obligations
• Art 15.6 Understandings Regarding Certain Public Health Measures
• Art 15.7 National Agreements
• Art 15.8 National Treatment
• Art 15.9 Transparency
• Art 15.10 Application of Chapter to Existing Subject Matter and Prior Acts
• Art 15.11 Exhaustion of Intellectual Property Rights, and
• Art 15.12 Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions.

The only definition that I need to consider at this stage is the meaning of "intellectual property." For the purpose of this agreement, the term refers to all categories of intellectual property that are the subject of Sections 1 through 7 of Part II of the TRIPS Agreement. That is to say, copyright and related rights, trade marks, geographical indications, industrial designs, patents, semiconductor topography designs and undisclosed information.

The objectives of the agreement are set out in art 15.2:

"The protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations."

Each party is required by art 15.5 (3) to give effect to Chapter 15 but is free to determine the appropriate method of implementing it within its own legal system and practice.

Under art 15.5 (1), the parties affirm their existing rights and obligations with respect to each other under the TRIPS Agreement. They also confirm at art 15.7 that they have ratified or acceded to the following agreements:

(a) TRIPS Agreement;
(b) Paris Convention;
(c) Berne Convention;
(d) Rome Convention;
(e) WCT;
(f) WPPT;
(g) Marrakesh Treaty;
(h) Madrid Protocol;
(i) Nice Agreement;
(j) Singapore Treaty;
(k) Budapest Treaty;
(l) UPOV 1991;
(m) PCT; and
(n) PLT.

Each of those agreements is identified in art 15.1.

In art 15.4, the parties recognize the need to:

"(a) promote innovation and creativity;
(b) facilitate the diffusion of information, knowledge, technology, culture, and the arts; and
(c) foster competition and open and efficient markets,
through their respective intellectual property systems, while respecting the principles of transparency and due process, and taking into account the interests of relevant stakeholders, including right holders, service providers, users, and the general public."

The Parties acknowledge the importance of adequate, effective and balanced protection and enforcement of intellectual property rights in art 15.5 (2) but are conscious of the need to prevent measures to enforce intellectual property rights from becoming in themselves barriers to legitimate trade. Accordingly, art 15.3 (2) provides:

"Appropriate measures, provided that they are consistent with the provisions of this Chapter, may be needed to prevent the abuse of intellectual property rights by right holders or the resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology."

Another important qualification to the protection and enforcement of intellectual property rights concerns public health. Art 15.3 (1) permits each party in formulating or amending its laws and regulations, to adopt measures necessary to protect public health and nutrition, and to promote the public interest in sectors of vital importance to their socio-economic and technological development. Each party affirms the Declaration on TRIPS and Public Health at art 15.6 (1) with the following understandings:

"(a) the Parties affirm the right to fully use the flexibilities as duly recognised in the Declaration on TRIPS and Public Health;
(b) the Parties agree that this Chapter does not and should not prevent a Party from taking measures to protect public health; and
(c) the Parties affirm that this Chapter can and should be interpreted and implemented in a manner supportive of each Party’s right to protect public health and, in particular, to promote access to medicines for all."

It is specifically agreed in art 15.6 (2) that Chapter 15 does not and should not prevent the effective utilisation of Article 31bis of the TRIPS Agreement, and the Annex and Appendix to the Annex to the TRIPS Agreement. Moreover, by art 15.6 (3) the parties recognize the importance of contributing to the international efforts to implement art 31bis of the TRIPS Agreement, and the Annex and Appendix to the Annex to the TRIPS Agreement.

In respect of all categories of intellectual property covered in Chapter 15, art 15.8 (1) requires each party to accord to nationals of the other party treatment no less favourable than it accords to its own nationals with regard to the protection of intellectual property rights subject to the exceptions already provided for in, respectively, the Paris Convention, the Berne Convention, the Rome Convention, the WPPT, and the TIPRIC (the Treaty on Intellectual Property in Respect of Integrated Circuits, adopted at Washington on 26 May 1989). Art 15.1 (2) provides that "nationals" for this purpose means "a person of a Party that would meet the criteria for eligibility for protection provided for in the agreements listed in Article 15.7 (International Agreements) or the TRIPS Agreement". In respect of performers, producers of phonograms and broadcasting organisations, the above obligation applies only in respect of rights provided under the free trade agreement. However, art 15.8 (3) provides that art 15.8 (1) does not apply to procedures provided in multilateral agreements concluded under the auspices of WIPO relating to the acquisition or maintenance of intellectual property rights. A party may also derogate from art 15.8 (1) in relation to its judicial and administrative procedures, including requiring a national of the other party to designate an address for service of process in its territory, or to appoint an agent in its territory, provided that this derogation is:
(a) necessary to secure compliance with laws or regulations that are not inconsistent with this Chapter; and
(b) not applied in a manner that would constitute a disguised restriction on trade.

Art 15.9 requires each party to endeavour to publish online:
(1)   its laws, regulations, procedures, and administrative rulings of general application concerning the protection and enforcement of intellectual property rights;

(2)   subject to its law information that it makes public concerning applications for trade marks, geographical indications, registered designs, patents, and plant variety rights; and
(3) subject to its laws online information that it makes public concerning registered or granted trade marks, geographical indications, designs, patents, and plant variety rights, sufficient to enable the public to become acquainted with those registered or granted rights.
Both the Intellectual Property Office and IP Australia seem to satisfy this requirement already.

Art 15.10 (1) provides that unless otherwise provided, Chapter 15 gives rise to obligations in respect of all subject matter existing at the date of entry into force of the free trade agreement and that is protected on that date in the territory of a party where protection is claimed, or that meets or comes subsequently to meet the criteria for protection under that chapter. A party shall not be required to restore protection to subject matter that on the date of entry into force of the agreement has fallen into the public domain in its territory. Chapter 15 does not give rise to any obligation in respect of acts that occurred before the date of entry into force of the free trade agreement.

Section A ends with two miscellaneous provisions. First, art 15.11 states that nothing in that agreement prevents a party from determining whether or under what conditions the exhaustion of intellectual property rights applies under its legal system. Secondly, Australia and the UK affirm their commitment to work together through discussion and by the exchange of information at the WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore under art 15.12.

I shall address Section B on Cooperation which runs from art 15.13 to art 15.19 inclusive shortly.   In the meantime, anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 during normal business hours or send me a message through my contact form. 

Brexit Briefing - December 2017

Author Furfur
Licence: Creative Commons Attribution-Share Alike 4.0 International

Jane Lambert

To my great surprise and joy our government's representatives achieved sufficient progress in their negotiations with the Commission on citizens' rights, the Irish border and the financial settlement for the Commission to recommend to the Council that "sufficient progress has been made in the first phase of the Article 50 negotiations with the United Kingdom" (see the Commission's press release Brexit: European Commission recommends sufficient progress to the European Council (Article 50) 8 Dec 2017).

The actual terms of the agreement in principle are set out in a Joint report from the negotiators of the European Union and the United Kingdom Government on progress during phase 1 of negotiations under Article 50 TEU on the United Kingdom's orderly withdrawal from the European Union 8 Dec 2017.  It is clear that important concessions have been made by Her Majesty's government, including a continued role for the Court of Justice of the European Union after we leave the European Union as I pointed out in A Continued Role for the CJEU after Brexit - A Sensible Concession 29 Dec 2017.  I observed that it was, of course, a very sensible concession and I commended the Prime Minister for making it but I had to add that "a climb down is still a climb down."

There was one paragraph of the Joint Report that I found personally comforting and that was paragraph 32 on continuing recognition of professional qualifications:

"Decisions on recognition of qualifications granted to persons covered by the scope of the Withdrawal Agreement before the specified date in the host State and, for frontier workers, the State of work (either the UK or an EU27 Member State) under Title III of Directive 2005/36/EC (recognition of professional qualifications where the person concerned was exercising the freedom of establishment), Article 10 of Directive 98/5/EC (lawyers who gained admission to the host State profession and are allowed to practise under the host State title alongside their home State title) and Article 14 of Directive 2006/43/EC (approved statutory auditors) will be grandfathered. Recognition procedures under these Directives that are ongoing on the specified date, in respect of the persons covered, will be completed under Union law and will be grandfathered."

Now that goes some way to meeting one of the submissions of the leaders of the British intellectual property professions to Her Majesty's government about which I blogged earlier today in IP and Brexit - Key Requests to HMG 9 Jan 2018. I am 100% behind my chairman, Daniel Alexander QC, in making those requests. They are vitally important to British business as well as the British legal and intellectual property professions. But asking for the legislation creating EU trade marks, Community designs, geographical indications of origin and plant breeders' rights to remain part of out law and even retaining part of the Central Division of the Court of First Instance of the Unified Patent Court in London really is like asking for the moon. I fervently hope that I am wrong but I very much doubt that I am.

So now we proceed with the next phase of negotiations which are for a transitional agreement that will govern our relations with the remaining member states after 29  March 2019. The Commission set out its negotiating objectives just before Christmas.  These are summarized in the Commission's press release on 20 Dec 2017 Brexit: European Commission recommends draft negotiating directives for next phase of the Article 50 negotiations:

• "There should be no "cherry picking": The United Kingdom will continue to participate in the Customs Union and the Single Market (with all four freedoms). 
• The Union acquis should continue to apply in full to and in the United Kingdom as if it were a Member State. Any changes made to the acquis during this time should automatically apply to the United Kingdom.
• All existing Union regulatory, budgetary, supervisory, judiciary and enforcement instruments and structures will apply, including the competence of the Court of Justice of the European Union.
• The United Kingdom will be a third country as of 30 March 2019. As a result, it will no longer be represented in Union institutions, agencies, bodies and offices.
• The transition period needs to be clearly defined and precisely limited in time. The Commission recommends that it should not last beyond 31 December 2020."

Now I am all in favour of give and take but even my hackles rise at those proposals. No wonder our government is exploring no deal alternatives such as membership of the Trans-Pacific Partnership if they will have us (see UK looks to join Pacific trade group after Brexit 2 Jan 2018 Financial Times) and the appointment of a minister for no-deal (see A minister for no deal? 8 Jan 2018 Financial Times).

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

Commission Position Paper on Intellectual Property Rights including Geographical Indications

Jane Lambert

Even before the EU referendum, IP lawyers in the United Kingdom wrote articles and gave talks on what would happen to intellectual property rights if we voted to leave the EU. I penned my first thoughts in Were we to go - what would Brexit mean for IP? 26 Feb 2016 NIPC Law and returned to the subject immediately after the referendum in What Sort of IP Framework do we need after Brexit and what are we likely to get? 3 July 2016. I have written a lot of other articles on the subject since then many in the context of the unitary patent and the Unified Patent Court,  as have a lot of other people. However, until today we did not know much about the thinking of the Commission and the remaining 27 member states.

Now we have a position paper dated 6 Sept 2017 from the European Commission, Task Force for the Preparation and Conduct of the Negotiations with the United Kingdom under Article 50 TEU which has been transmitted to the remaining member states on Intellectual property rights (including geographical indications) for discussion today. It is not a particularly weighty document either in the word count or in its ideas. Above all, it does not address the issue upon which businesses upon both sides of the English channel (and indeed the rest of the world) want an answer namely, can a way be found to keep the United Kingdom in the Unified Patent Court and unitary patent system if we leave the European Union?

The document, which is 5 pages long including the cover page, begins with the following statement:

"The withdrawal of the United Kingdom from the European Union will create uncertainty for UK and EU27 stakeholders alike in relation to the scope of protection in the United Kingdom of certain intellectual property rights; to the treatment of applications for certain rights and to the exhaustion of rights conferred by intellectual property rights. This uncertainty will significantly affect the conditions under which goods that are placed on the market in the Union before the withdrawal date could continue to circulate between the EU27 and the UK."

Well, they can say that again.  I don't think even the most extreme Eurosceptic would disagree with that.

They suggest that any withdrawal agreement that we make with the remaining member states should ensure that:

"(a) the protection enjoyed in the United Kingdom on the basis of Union law by both UK and EU 27 holders of intellectual property rights having unitary character within the Union before the withdrawal date is not undermined by the withdrawal of the United Kingdom from the European Union;
(b) procedure-related rights (e.g. right of priority) in relation to an application for an intellectual property right having unitary character within the Union still pending on the withdrawal date are not lost when applying for an equivalent intellectual property right in the United Kingdom;
(c) applications for supplementary protection certificates or for the extension of their duration in the United Kingdom on-going before the withdrawal date are completed in accordance with the conditions set out in Union law;
(d) databases protected in the EU27 and the UK before the withdrawal date continue to enjoy protection after that date and
(e) exhaustion before the withdrawal date within the Union of the rights conferred by intellectual property rights is not affected by the withdrawal of the United Kingdom from the European Union."

I think the EU negotiators will find themselves pressing on an open door for most if not all of that.

My heart leapt a little when I saw the paragraphs headed "Intellectual property rights having unitary character within the Union" and  "Applications for Intellectual property rights having unitary character within the Union" because the words "unitary patent" are a shorthand for the expression "European patent having unitary effect". It sank, however, when I read the text of those paragraphs because the Commission seeks only the transposition of rights granted under EU regulations into national law and that is going to happen automatically under the European Union (Withdrawal) Bill.

As the Intellectual Property Bar Associaton ("IPBA"), of which I am a member, said at paragraph 10 of Paper 16 of the Brexit Papers on Intellectual Property:

"Intellectual property services are currently a flourishing area in the UK and the UK has significant influence in this area. Rights are well protected but subject to sensible defences. The intellectual property bar is very active and the excellence of the courts is widely appreciated, making a significant positive contribution."

The IPBA suggested that the UK Government should do the following to ensure that that remains the case:

 Securing rights to provide professional services
1. Rights of representation/practice - The IPBA joins and endorses the recommendations and requests set out in the Bar Council Position on Access to the EU Legal Services Market Post-Brexit.

1.1.1 UK as forum of choice - HMG should explore ways to ensure that the UK retains its position as a forum of choice for intellectual property matters in Europe. This should include steps to ensure that the UK remains more efficient and quicker as a litigation forum than other EU countries and EU courts. It should also include attempts to ensure that the UK is able fully to participate in the UPC post-Brexit and that, if the UK is not able to do so, the UK is nonetheless well-placed to remain a first-choice forum for resolution of patent disputes in Europe.
1.1.2 Prioritisation - HMG should ensure that the area of specialist legal services, including rights of representation in intellectual property cases, is given no less priority than that given to any other area of services provision in Brexit negotiations in which rights of access to the EU may be important.
1.1.3 Avoidance of approaches to Brexit which would be most likely to damage this sector - The UK should avoid any general approach to Brexit which would make such arrangements harder to secure. 

2. Ensuring that post-Brexit there is equivalent protection for intellectual property in the UK as currently exists under harmonised EU law, that there is no gap in protection with regard to existing rights and that defences which currently exist to infringement of intellectual property rights continue to apply unless and until specifically altered.

2.1. Ensuring continuing influence on substantive and procedural EU law which may affect industry in the UK. 2.1.1. HMG should take steps to ensure that the UK perspective continues to be heard by EU legislative and judicial authorities, where decisions are made that may have an impact on UK law and practice.
2.1.2. This may involve ensuring that HMG makes timely responses to EU consultations on legislative change and that it intervenes (and ensures generous rights of intervention for others) in CJEU cases which may have a direct impact on UK undertakings and an indirect impact on UK law after Brexit."

The IPBA has said that we would be happy to assist HMG in formulating appropriate strategies to that end. The government would be wise to take up that offer. If there is one thing that barristers know a lot about, it is negotiation.

Should amplification or clarification of any part of this article be required, call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

Post Script

The Chartered Institute of Patent Attorneys are much more kind to the Commission's position paper than I have been (see CIPA welcomes EC Position on IP Rights - Post Brexit 7 Sep 2017). The Institute's President, Tony Rollins, says:

“The paper only deals with EU unitary rights, that is, trade marks, registered and unregistered designs, plant variety rights and protected geographical indications, and does not deal with patents.
“This is because the European patent system is not a European Union institution and so will be entirely unaffected by Brexit. For UK-based patent attorneys carrying out European patent work it will continue to be business as usual."

I do wish I could agree with him but I can't.  Regulations 1257/2012 and 1260/2012 are EU instruments, art 84 (1) of the UPC Agreement makes clear that it is open to signature only for EU member states and art 20 spells out:

"The Court shall apply Union law in its entirety and shall respect its primacy."

If it were otherwise, the optional Litigation Protocol to the European Patent Convention would have been up and running by now.