Plant Breeders' Right after Brexit

A Saline Resistant Wheat Variety

Author US Department of Agriculture
Licence Copyright waived by US government
Source Wikipedia "Plant Breeding"

Jane Lambert

A plant breeders' right is the exclusive right to prevent reproduction, marketing, selling and certain other acts in relation to new plant varieties.  Plant breeders can acquire those rights for the UK alone by registering  the plant variety with the Plant Variety Rights Office in Cambridge. Alternatively, they can obtain such protection in all 28 EU member states including the UK by registering it with the Community Plant Variety Office ("CPVO") in Angers.

The legislation that established the CPVO and provides for plant breeders' rights throughout the EU is Council Regulation (EC) No 2100/94 of 27 July 1994 on Community plant variety rights ("the Plant Variety Rights Regulation").  That regulation will cease to apply to the UK once it leaves the EU by reason of art 50 (3) of the Treaty of European Union.  If HM government concludes a withdrawal agreement substantially on the terms of the draft that has circulated since the end of February the regulation will continue to apply to the UK until 31 Dec 2020.   If this country leaves without such an agreement the regulation will cease to apply after 29 March 2019.

On 12 Oct 2018 the Department for Agriculture, Food and Rural Affairs published a guidance note entitled Plant variety rights and marketing of seed and propagating material if there’s no Brexit deal in case the UK leaves the EU without a withdrawal agreement.  According to the note, existing Community plant variety rights belonging to British rights holders will continue to be recognized and enforced in the remaining EU member states. They will also be recognized and protected in the UK presumably because the regulation will be incorporated into our national law by s.3 of the European Union (Withdrawal) Act 2018.

The guidance states that where an application has been made to the CPVO but not granted before the UK leaves the EU, the applicant must make a fresh application to the Plant Variety Rights Office. However, the applicant will keep the same priority date and rely on the same test for distinctiveness, uniformity and stability.

The CPVO issued a Notice to Stakeholders regarding the withdrawal of the UK and EU rules in the field of Plant Variety Rights on 30 Jan 2018.

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

Copyright and Related Rights after Bexit

Jane Lambert

Copyright is the exclusive right to copy, publish, perform, rent or lend, make available to the public, communicate to the public or make an adaptation of an original artistic, dramatic, literary or musical work, broadcast, film or sound recording or typographical arrangement of a published work.   Unlike patents, trade marks and registered designs they come into being automatically.   They do not need to be registered with the Intellectual Property Office or other agency.

Related Rights
Related rights are rights that are similar to copyright in that they also protect creative output.  In the UK they include

• rights in performances such as the right of an actor, dancer, musician, singer or other performer to object to the broadcasting, filming or taping of his or her live performance' 
• unregistered design right which is the exclusive right to make articles to  an original design; and
• database right which is the right to prevent extraction and unauthorized re-utilization of the contents of  a database.

Those rights also come into being automatically and do not have to be registered.

Effects of Brexit

Brexit will be less disruptive of copyright and related rights than of trade marks, registered designs, plant varieties or even patents.  The main change will be the loss of rights under the following legislation:

• The Database Directive (Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases);
• The Portability Regulation (Regulation (EU) 2017/1128 of the European Parliament and of the Council of 14 June 2017 on cross-border portability of online content services in the internal market);
• The Satellite and Cable Directive (Council Directive 93/83/EEC of 27 September 1993 on the coordination of certain rules concerning copyright and rights related to copyright applicable to satellite broadcasting and cable re-transmission);  
• The Orphan Works Directive (Directive 2012/28/EU of the European Parliament and of the Council of 25 October 2012 on certain permitted uses of orphan works); 
• The Collective Rights Management Directive (Directive 2014/26/EU of the European Parliament and of the Council of 26 February 2014 on collective management of copyright and related rights and multi-territorial licensing of rights in musical works for online use in the internal market);
• The Marrakesh Directive (Directive (EU) 2017/1564 of the European Parliament and of the Council of 13 September 2017 on certain permitted uses of certain works and other subject matter protected by copyright and related rights for the benefit of persons who are blind, visually impaired or otherwise print-disabled and amending Directive 2001/29/EC on the harmonisation of certain aspects of copyright and related rights in the information society); and
• Regulation (EU) 2017/1563 of the European Parliament and of the Council of 13 September 2017 on the cross-border exchange between the Union and third countries of accessible format copies of certain works and other subject matter protected by copyright and related rights for the benefit of persons who are blind, visually impaired or otherwise print-disabled.

If the UK concludes a withdrawal agreement in accordance with the draft that was first published at the end of February 2018, those rights will continue until at least the 31 Dec 2020.  If the UK leaves without a withdrawal agreement, the rights will be lost on 29 March 2019.

Database Rights
The Database Directive creates a new intellectual property right known as "database right".  Art 11 (1) of the directive provides that database rights shall apply only to databases whose makers or rights holders are nationals of a member state or who have their habitual residence in the territory of the EU.  If and when the UK leaves the EU, British makers and rights holders will cease to be nationals or habitual residents of an EU member state.

The Database Directive is implemented in the UK by The Copyright and Rights in Databases Regulations 1997.   There is no reason why those regulations should not remain in force though the qualification requirements in reg 18 would have to be amended if new British databases are to be protected.  However, databases made or owned by British nationals or residents are unlikely to be protected anywhere in the EU.

In its guidance Copyright if there's no Brexit deal , the Department for Business, Energy and Industrial Strategy suggests that "UK owners may want to consider relying on other forms of protection (e.g. restrictive licensing agreements or copyright where applicable) for their databases." The problem with that suggestion is that copyright is not the same as database right. Copyright subsists in the selection or arrangement of the contents of a database in so far as they constitute the author's own intellectual creation.  Database right, on the other hand, is the right to prevent unauthorized extraction and re-utilization of the contents of that database.  As for restrictive licensing, there must be something to license.  If database right no longer subsists in a British owned database it is less than obvious how a restrictive licence could work.  A better solution might be to incorporate a subsidiary company in one of the remaining EU member states and to assign the copyright and database rights in the database to the subsidiary.

Portability of Online Content   
Since 1 April 2018 it has been possible for subscribers to online content such as film, music or sport in one EU member state to continue to receive that content in the rest of the EU.   Art 3 (1) of Regulation 2017/1128 makes clear that that service is available only to citizens of EU member states.  After the UK leaves the EU, service providers must cease to provide access to online content to British subscribers when they visit the EU.   There is nothing to prevent content providers that establish themselves in another member state from continuing to provide their services to citizens of other member.

Satellite Broadcasting
Directive 93/83/EEC enables satellite broadcasters in one member state to transmit to the rest of the EU material that has been cleared in the member state of origin.   When the UK ceases to be a member of the EU, British broadcasters will lose the benefit of that Directive.   Anything that they transmit from the UK to another EU country will have to be cleared for reception in that country.  If a broadcaster wants to broadcast the programme to more than one member state, he or she must clear the programme in each and every country.

Orphan Works  

Orphan works are works in which copyright subsists but the owner of such copyright is unknown. Art 6 (1) of Directive 2012/28 provides an exception to copyright law that enables libraries, art galleries, museums and other institutions in the EU to make digital copies of such works available online.  That exception could no doubt continue for the UK but British institutions will lose that exemption in the remaining member states. They will risk infringement claims by the owners of copyrights in orphan works if they continue to provide such material to the rest of the EU.

Collective Rights Management
Directive 2014/26 enables a collecting society or other collective rights management organization in one member state to grant online music licences for the rest of the EU.  After the UK leaves the EU British collective management organizations will cease to be able to mandate collective management organizations in the EU to grant multi-territorial licences of online rights in music.  

Marrakesh Treaty

The Marrakesh Treaty requires contracting parties to create exceptions to their copyright laws to enable copies of copyright works to be made for blind or visually impaired persons.  Her Majesty's Government intends to accede to that treaty but has not yet done so.   At present, publishers of works for blind and visually impaired persons can rely on Regulation 2017/1563 as it allows the cross-border transfer of accessible format copies of copyright works between EU member states and with other countries that have ratified the treaty. If the UK leaves the EU before this country accedes to that treaty there will be a hiatus during which time it will not be possible to import accessible materials from, or export such materials to, the UK without the licence of the copyright owner.

Further Information

The Department for Business's guidance urges those who are likely to be affected by the above changes to seek professional advice.  Anyone wishing to discuss this article or copyright and related rights generally should call me on +44 (0)20 7404 5252 during normal office hours or send me a message through my contact form.

EU Trade Marks and Community Designs after Brexit

Jane Lambert

At present it is possible to register a trade mark with the European Union Intellectual Property Office ("EUIPO") for the whole European Union including the United Kingdom as an EU trade mark ("EUTM"). Similarly, it is possible to register a design with the EUIPO for the whole EU including the UK as a registered Community design ("RCD").  Designs that are capable of being registered as RCDs are protected automatically from copying for 3 years from being made available to the public as unregistered Community designs ("UCD"). All those rights were created by regulations made under EU treaties that cease to apply to the UK when it leaves the EU.

If HM government concludes a withdrawal agreement with the EU before 29 March 2019, those regulations will continue to apply to the UK until 31 Dec 2020 when it is hoped that a new relationship with the EU will be in place.  If the UK leaves on 29 March 2019 without a withdrawal agreement, the provisions contained in the regulations will be preserved in the UK by s.3 of the European Union (Withdrawal) Act 2018.  The regulations will, of course, continue to apply in the states that remain in the EU.

It appears from the guidance Trade marks and designs if there’s no Brexit deal that legislation will be introduced to enable applicants for an EUTM or RCD at the time of Brexit to apply to the UK Intellectual Property Office ("the IPO")  for simillar trade mark or registered design protection.  They must make their application within 9 months of Brexit.  They will be able to retain the date of the EU application for priority purposesI.   Owners of EUTMs and RCDs will be able to convert their registrations into British trade marks or registered designs "with minimal administrative burden."  The guidance states that the "UK is also working, including with the World Intellectual Property Organisation, to provide continued protection in the UK from March 2019 for trade marks and registered designs filed through the Madrid and Hague Systems, and designating the EU as the area where they apply."

The implications for EUTM and RCD owners will be as follows:

• "existing registered EU trade marks or registered Community designs held will continue to be valid in the remaining EU member states
• protection of existing registered EU trade marks or registered Community designs in the UK will be through a new, equivalent UK right which will be granted with minimal administrative burden
• right holders will be notified that a new UK right has been granted. Any business, organisation or individual that may not want to receive a new comparable UK registered trade mark or design will be able to opt out
• provision will be made regarding the status of legal disputes involving EU trade marks or registered Community designs which are ongoing before the UK courts and more information will be provided on this before the point at which the UK exits the EU
• applicants with a pending application for an EU trade mark or a registered Community design at the point of exit will be able to refile, within nine months from the date of exit, under the same terms for a UK equivalent right, retaining the EU application date for priority purposes
• applicants with pending applications for an EU trade mark or a registered Community design will not be notified and after exit will need to consider whether they refile with the Intellectual Property Office to obtain protection in the UK
• new applications will be eligible to be filed in the UK for UK trade marks and registered designs as they are now, and at the cost specified in the UK fee structure
• UK applicants, like EU and third country applicants, will continue to be able to apply for protection in the EU through an EU trade mark or registered Community design as they do currently,"

Finally, the guidance announces that a new intellectual property right, to be known as a "supplementary unregistered design right" with the characteristics of an UCD, will be established.  The guidance notes:

• "existing unregistered Community designs will continue to be valid in the remaining EU member states
• protection of existing unregistered Community designs in the UK will be provided for with no action required by the right holder
• provision will be made regarding the status of legal disputes involving unregistered Community designs which are ongoing before UK courts."

The EUIPO published frequently asked questions on the impact of the United Kingdom's withdrawal from the European Union on the European Union trade mark and the Community design on 18 Jan 2018 and a notice to holders of, and applicants for, EUTM and RCD on 1 Dec 2017,

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

Brexit Briefing September 2018

Treading Water

Author Lance corpora; Erin McKnight
Licence Copyright waived by US government

Source Wikipedia

Jane Lambert

The theme of this month's Brexit Briefing is treading water.  There have been a lot of events like the Salzburg summit and Mrs May's reaction to it, the Labour and Tory Party conferences and the publication of Guidance on how to prepare for Brexit if there's no deal.  The government has not fallen. The white paper on the future relationship with the EU has not been abandoned.  There is growing popular support for a second referendum in all the political parties despite resistance from the Prime Minister and very lukewarm support from the Leader of the Opposition.

It is clear from the government's guidance notes that exiting the EU on 29 March 2019 would come at a cost for most businesses.   I have reviewed just two of those notes on patents (see Patents if there is no deal 3 Oct 2018) and geographical indications (see Geographical Indications after Brexit 6 Oct 2018 NIPC Branding).  It would also be bad for at least some of our neighbours as Dáithí O’Ceallaigh, a former Irish ambassador to London, explained in his lecture at Cardiff University on 28 Feb 2018 (see Brexit from an Irish perspective - Dáithí O’Ceallaigh  YouTube 28 Feb 2018).   Yet that is what will happen unless agreement is reached on every issue in negotiation including the thorny issue of the Irish border.

Yet how to avoid checks and inspections between one country that is within the single market and another that is not is a conundrum to which there seems to be no obvious solution.   If, for example, free movement of labour is permitted by Ireland but not by the UK, what is there to stop a migrant from another part of the EU from flying to Dublin and then taking a train to Belfast or indeed a ferry to Fishquard.

The possibility of a further referendum with "remain" being an option is unlikely but slightly less unlikely than it was a month ago.   It could result from a stalemate in Parliament between those favouring a clean break Brexit now and those desiring as little disruption of trade and investment with the remaining member states as possible.

As the outcome could be a sharp sudden break  on 29 March, an implementation period between 29 March and 31 Dec 2020 or maybe even no Brexit at all, treading water seems a sensible option for most businesses, certainly over the next few months.

Anyone wishing to discuss this briefing or the consequences of Brexit generally should call me on 020 7404 5252 or send me a message through my contact form.

Post Script
The Rt Hon Dominic Raab MP has delivered this statement to the House of Commons on the withdrawal agreement negotiations and HM government's preparations for quitting the EU without such an agreement.

Patents if there’s no Brexit Deal

Jane Lambert

Since the 23 Aug 2018 the Department for Exiting the European Union has been publishing guidance on how to prepare for Brexit if there is no withdrawal agreement (see Jane Lambert And if there is no deal ......... 24 Aug 2018).  These are indexed in How to prepare if the UK leaves the EU with no deal which was published on 24 Sept 2018.  Several of those guidance notes concern intellectual property including Patents if  there's no Brexit deal subtitled How the UK patent system would be affected if the UK leaves the EU in March 2019 with no deal published on 24 Sept 2018.

Like all the other guidance notes, this one opens with the statement:

"A scenario in which the UK leaves the EU without agreement (a ‘no deal’ scenario) remains unlikely given the mutual interests of the UK and the EU in securing a negotiated outcome."

It continues that negotiations are going well but the government has to be ready for all eventualities. It has published this and other other technical notes "to allow businesses and citizens to understand what they would need to do in a ‘no deal’ scenario, so they can make informed plans and preparations."

The note explains how our withdrawal from the EU without a deal would affect:

• the UK patent system and supplementary protection certificates ("SPC"),
• the Unified Patent Court ("UPC") and unitary patent, and
• correspondence addresses and confidentiality for UK patents.

In respect of each of those topics the note sets out the position before and after 29 March 2019.

With regard to patents and SPCs, the guidance notes that few areas of patent law derive from EU legislation. Pharmaceutical and agrochemical products are important exceptions in that SPCs provide an additional period of protection for those inventions after their patents run out. There are also special provisions for biotechnological inventions, compulsory licences for patented medicines and limitations to the scope of a patent monopoly to permit trials and tests and other activities.  The note states that s.2 of the European Union (Withdrawal) Act 2018 will preserve the relevant EU legislation and s.3 will incorporate it into our law.

The note is much less certain and hence less helpful when it comes to the UPC. It begins with the extraordinary statement 

"The Unified Patent Court will hear cases relating to European patents and the new unitary patent – both administered by the non-EU European Patent Office"

in the "Before 29 March 2019" section. That is simply not happening and is unlikely to happen in the next few months.  The note then contradicts itself in the last two sentences of that section:

"The Unified Patent Court (UPC) is not yet in force, with the start date being dependent on ratification of the Unified Patent Court Agreement by Germany. It is unclear whether the Unified Patent Court and unitary patent will start before 29 March 2019."

It describes the UPC as "an international patent court established through an international agreement (the Unified Patent Court Agreement) between 25 EU countries" without mentioning that art 84 (1) states that this agreement is open to membership only to EU member states or that the legislation that provides for the unitary patent is an EU regulation.

After 29 March 2019 the note suggests two different scenarios for the UPC:

• The UPC Agreement will not come into force because the UK will leave the EU before Germany ratifies the agreement; or
• The agreement does come into force in which case "there will be actions that UK and EU businesses, organisations and individuals may need to consider." These will include exploring whether it will be possible for the UK to remain within the UPC and unitary patent systems in a ‘no deal’ scenario". 

The note gives the following advice to businesses and other stakeholders if the agreement comes into force before the 29 March 2019 but the UK has to withdraw:

• "UK, EU and third country businesses will still be able to use the Unified Patent Court and unitary patent to protect their inventions within the EU
• any existing unitary patents (UPs) will give rise to patent protection within the UK with no action required by the right holder. The UP system will only come into force when the Unified Patent Court is operational. UPs will not be available to businesses until this point
• provision will be made regarding the status of any pending cases before the Unified Patent Court at exit
• UK, EU and third country businesses seeking protection in the UK for their inventions will need to use national patents (including patents available from the non-EU European Patent Office) and the UK court system."

The last section on correspondence addresses and confidentiality for UK patents is really concerned with addresses for service, representation in the European Patent Office and Intellectual Property Office and legal professional privilege.  As the EPO unlike the EU Intellectual Property Office, is not an EU institution, there is unlikely to be any change in the existing in the arrangements that relate to patents.  The position with regard to Community designs and EU trade marks will be different.

About the best advice in the guidance note is that "businesses may wish to seek legal advice on how these arrangements could affect their business model or intellectual property rights."  Advice which is repeated below:

"You should consider whether you need separate professional advice before making specific preparations."

That is a service that I am well placed to provide and very willing to give.

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