Monday, 17 August 2020

British Intellectual Asset Owners' Rights after Brexit: IP Provisions of Bilateral Investment Treaties and Free Trade Agreements

Rt Hon Elizabeth Truss MP
Author  Chris McAndrew - Licence CC BY 3.0

Jane Lambert

Tomorrow I shall deliver a talk entitled  Bilateral Investment Treaties & Exporters' Rights Post-Brexit to the IP Law Summer School. I first gave that talk on 17 Aug 2017 a few months after Mrs Theresa May had served notice under art 50 (2) of the Treaty on European Union of the UK's intention to leave the EU and negotiations on the terms of its withdrawal were at a very early stage, I delivered an updated version of that talk on 15 August 2019 after the government had lost its majority.   At that time, there was uncertainty as to whether the UK would leave the EU with or without a withdrawal agreement or even whether the UK would leave the EU at all. 

It has become necessary for me to update my talk again because there has now been a general election at which the government secured a sufficient majority in the House of Commons to withdraw from the EU on the terms of the Agreement on the withdrawal of the United Kingdom of Great Britain and Nothern Ireland from the EuropeanUnion and the European AtomicEnergy Community ("the withdrawal agreement").  In accordance with art 50 of the Treaty, the government has also agreed to a Political Declaration setting out the framework for the future relationship between the European Union and the United Kingdom  ("the political declaration").   This country left the EU at 23:00 on 31 Jan 2020 and is now in a period of transition that is due to last until 31 Dec 2020 during which EU law continues to apply to the UK. The purpose of the transition period is to enable officials from the UK and EU to negotiate terms for a new relationship after the expiry of that period. In addition to its negotiations with the EU, the government is in negotiations with the governments of a number of other countries, notably Australia, Japan, New Zealand and the USA, for new free trade agreements.   It has also announced its intention to apply to join the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (see the Department for International Trade's update of 17 June 2020).

British businesses have benefited from this country's membership of the European Union in the following respects.  First, the substantive laws on copyrights, databases, designs, rights in performances, trade marks, trade secrets and supplementary protection certificates have been harmonized thereby facilitating their legal protection.  Secondly, it has become possible to protect brands, designs and plant varieties across the EU with EU trade marks and Community designs and plant varieties. Thirdly, the rights of EU intellectual asset holders including those from the UK have been extebded beyond Europe in the free trade and other agreements that the EU has made with third countries.  These benefits will come to an end on 31 Dev 2020   The purpose of tomorrow's talk is to consider the new environment for British business so far as it relates to intellectual property.

Some of the present arrangements will not change.   The UK will continue to be bound by the Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS") as it will remain a party to the Marrakesh Agreement Establishing the World Trade Organization.  Similarly, it will remain a member of the World Intellectual Property Organization ("the WIPO") and party to the Paris, Berne, Rome and other international intellectual property conventions to which it has already subscribed including the European Patent Convention and the Patent Cooperation Treaty.  Several countries that have negotiated free trade agreements with the EU have agreed to continue to trade with the UK on a similar basis.

As for the remaining member states of the EU, the withdrawal agreement contains a number of provisions that relate to intellectual property.   The political declaration binds the UK and EU as follows:
"42. The Parties should provide for the protection and enforcement of intellectual property rights to stimulate innovation, creativity and economic activity, going beyond the standards of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights and the World Intellectual Property Organisation conventions where relevant.
43. This should preserve the Parties' current high levels of protection, inter alia, of certain rights under copyright law, such as the sui generis right on databases and the artists' resale right. Noting the protection afforded to existing geographical indications in the Withdrawal Agreement, the Parties should seek to put in place arrangements to provide appropriate protection for their geographical indications.
 44. The Parties should maintain the freedom to establish their own regimes for the exhaustion of intellectual property rights.
45. The Parties should establish a mechanism for cooperation and exchange of information on intellectual property issues of mutual interest, such as respective approaches and processes regarding trademarks, designs and patents."
Both the EU's draft agreement of 18 March 2020 and the British government's counter-proposals for a comprehensive free trade agreement of 19 May 2020 contain extensive provisions on intellectual property.

The Comprehensive and Progressive Agreement for Trans-Pacific Partnership contains provisions against expropriation of investments and dispute resolution provisions that are similar to those found in the bilateral investment treaties that the British government has negotiated with a number of countries.  Such provisions entitle individual investors to seek compensation from a national government for the expropriation of their investment which could possibly include the revocation of patents or the loss of an opportunity to market products by reference to a trade mark because of a public health concern. Any free trade agreement that is likely to be negotiated with Australia, Japan, New Zealand and the USA can be expected to contain similar provisions.

Anybody wishing to discuss this article or any of its issues should contact me on +44 (0)20n 7404 5252 during office hours or send me a message through my contact form.

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