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

Wallaby

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. 

How Brexit has changed IP Law

 

EU Intellectual Property Office, Alicante

Author Kristof Roomp Licence CC BY 2.0

Jane Lambert

In Were we to go - what would Brexit mean for IP? (26 Feb 2016 NIPC Law) I first considered the consequences of Britsh withdrawal from the European Union.  It was obvious that EU trade marks, Community designs and Community plant varieties would cease to apply to the UK.  Also, I could not see how the UK could remain a party to the Unified Patent Court Agreement as the agreement was open only to EU member states. I considered the topic further in IP Planning for Brexit on 7 Dec 2016 in Implications of Brexit on Intellectual Property Law: What can be salvaged from the UPC Agreement on 17 Feb 2017 and in my contribution on IP to Helen Wong's Doing Business After Brexit.  As the UK has withdrawn from the EU and the transitional period is over, it is now possible to take stock. 

Art 50 Treaty on European Union ("TEU")

A timetable for the UK's departure was set by art 50 of the TEU.   Art 50 (2) requires the EU to negotiate and conclude an agreement with that departing state, setting out the arrangements for its withdrawal, taking account of the framework for its future relationship with the EU.  Art 50 (3) adds:

"The Treaties shall cease to apply to the State in question from the date of entry into force of the withdrawal agreement or, failing that, two years after the notification referred to in paragraph 2, unless the European Council, in agreement with the Member State concerned, unanimously decides to extend this period."

The former Prime Minister, Mrs Theresa May MP, served notification of the UK's intended departure under art 50 (2) on 29 March 2017.  Subject only to the possibility of an agreed extension to the notification period, the British government had to try to negotiate a withdrawal agreement and legislate for the UK's departure before 29 March 2019.

European Union (Withdrawal) Act 2018

The statute that effected the UK's departure from the EU was the European Union (Withdrawal) Act 2018.  As EU law would cease to apply to the UK from the expiry of the notification period or the entry into force of a withdrawal agreement, s.3 (1) of the Act preserved Council regulations by incorporating them into the laws of the UK.  These included the Council Regulations establishing EU trade marks,  Community designs, Community plant varieties and supplementary protection certificates.   S.8 (1) and Sched. 1 of the Act enabled Ministers to amend such Regulations by statutory instrument.   

The 2019 Statutory Instruments

Since it was not certain that a withdrawal agreement could be made and ratified by the 29 March 2019, the following statutory instruments were made in case the UK left the EU without such an agreement:

• The Intellectual Property (Copyright and Related Rights) (Amendment) (EU Exit) Regulations 2019 (SI 2019 No 605),
• The Intellectual Property (Exhaustion of Rights) (EU Exit) Regulations 2019 (SI 2019 No. 265),
• The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (SI 2019 No 269), 
• The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (SI 2019 No 638),  and
• The Plant Breeders’ Rights (Amendment etc.) (EU Exit) Regulations 2019 (SI 2019 No 204).

The Patents (Amendment) (EU Exit) Regulations 2019 (SI 2019 No 801) were made on 4 April 2019 after an extension had been agreed in accordance with art 50 (3) TEU.   The Agricultural Products, Food and Drink (Amendment) (EU Exit) Regulations 2019 (SI 2019 No 1366) were made on 21 Oct 2019.

The Withdrawal Agreement

Following further extensions in accordance with art 50 (3) TEU, the appointment of a new prime minister and more negotiations with the EU  the Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community ("the withdrawal agreement") was concluded on 19 Oct 2019.  That agreement was ratified by the European Union (Withdrawal Agreement) Act 2020 on 23 Jan 2020.

Title IV of Part Three of the withdrawal agreement included the following provisions on IP:

• Art 54 provided for continued protection in the UK of intellectual assets that had previously been protected as EU trade marks, registered Community designs, Community plant varieties and geographical indications;
• Art 55 established a procedure for registering trade marks, designs and plant breeders' rights to protect such assets in the UK;
• Art 56 provided for continued protection in the UK of international trade marks designating the EU under the Madrid system and international designs designating the EU under the Hague Agreement;
• Art 57 provided for continued protection in the UK of unregistered Community designs that would have come into being before 23:00 on 31 Dec 2020 for the remainder of their term and the creation of a similar UK intellectual property right to protect such designs that might come into being afterwards;
• Art 58 required continued protection of databases;
• Art 59 provided for pending applications for EU trade marks, RCD and Community plant variety rights;
• Art 60 provided for supplementary protection certificates' and
• Art 61 for the exhaustion of rights.

Although the UK left the EU on 31 Jan 2020 pursuant to the withdrawal agreement, art 126 provided for a transition or implementation period until 23:00 on 31 Dec 2020 during which time EU law would continue to apply to the UK.

The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020

Because of the extensions under art 50 (3) and the conclusion of a withdrawal agreement, the 2019 statutory instruments were not required until the end of the transition period.  As they had been drafted before the withdrawal agreement was concluded, they had to be modified to give effect to Title IV of that agreement.  The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (SI 2020 No 1050) amended the 2019 statutory instruments as follows:

• Part 2 amended the Intellectual Property (Copyright and Related Rights) (Amendment) (EU Exit) Regulations 2019, 
• Part 3 amended the Intellectual Property (Exhaustion of Rights) (EU Exit) Regulations 2019, 
• Part 4 amended the Trade Marks (Amendment etc.) (EU Exit) Regulations 2019, 
• Part 5 amended the Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019, and  
• Part 6 amended the Patents (Amendment) (EU Exit) Regulations 2019.

Part 7 amended the Patents Act 1977 and Part 8 and the Schedule Council Regulation (EC) No 469/2009, Regulation EU) No 2019/933 and the Patent Rules 2007.

Implementation of Title IV

Title IV of the withdrawal agreement is implemented as follows:

EU Trade Marks: Reg 2 and Sched 1 of The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 as amended by The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020  implement the provisions of arts 54 and 55 of the withdrawal agreement relating to EU trade marks.  Sched. 1 of the Regulations inserts a new s.52A and Sched 2A into the Trade Marks Act 1994.  They require an existing EU trade mark to be treated as registered under the Act.  Para 2 provides an opt-out for those who do not want a national trade mark. Part 3 governs applications for European Union trade marks which are pending on 31 Dec 2018.  

International Trade Marks Designating the EU: Reg 6 of The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 as amended implements art 56 of the withdrawal agreement by inserting a new s.54A and Sched 2B into the Act.  S. 54A provides for international trade marks designating the EU to be treated as though they had been registered under the Trade Marks Act 1994.  Sched 2B establishes a procedure for the registration of such marks as UK trade marks as well as certain other matters including an opt-out. 

Registered Community Designs:  Reg 5 and Sched. 3 of The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 implement the provisions of arts 54 and 55 of the withdrawal agreement relating to registered Community designs.  Para 2 of Sched. 3 inserts a new s.12A and a new s.12B into the Registered Designs Act 1949.  Para 3 inserts a new Sched 1A and a new Sched 1B into the Act.  S.12A and Sched 1A provide for existing registered Community designs to be treated as designs registered under the 1949 Act. S.12B and Sched 1B provide for international designs designating the EU are to be treated as though they had been registered under the 1949 Act. 

Continuing Unregistered Community Designs:  Reg 4 (3) and Sched 2, of The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 transpose into the laws of the UK the requirement in art 57 of the withdrawal agreement that designs that had been protected as UCD before the 31 Dec 2020 will continue to be protected afterwards. Any UCD that came into being before 23:00 on 31 Dec 2020 will continue to be protected in the UK for the remainder of its term as a “continuing unregistered Community design”.  Reg 4 (3) (a) and Part 1 of Sched. 2 of the 2019 Regulations anend the provisions of the Community Design Regulation that relate to unregistered Community designs.  Reg 4 (3) (b) and Part 2 of Sched. 2 further amend  The Community Design Regulations 2005 (SI 2005 No 2339).

Supplementary Unregistered Designs:  The obligation in art 57 of the withdrawal agreement to protect new designs having individual character that come into being after 23:00 on 31 Dec 2020 by a new UK intellectual property right to be known as the "supplementary unregistered design" is implemented by reg 3 and Sched. 1 of The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019.  Part 1 of Sched. 1 amends the Community Design Directive and Part 2 The Community Design Regulations.

Databases:  No new legislation was required to preserve The Copyright and Rights in Databases Regulations 1997 (SI 1997 No 3032) in accordance with art 58 of the withdrawal agreement, but that statutory instrument has been amended by reg 28 of The Intellectual Property (Copyright and Related Rights) (Amendment) (EU Exit) Regulations 2019.

Plant Varieties:  The requirement in art 54 (1) (c) of the withdrawal agreement that the holder of a Community plant variety right granted pursuant to Council Regulation (EC) No 2100/942 shall become the holder of a plant variety right in the United Kingdom for the same plant variety is implemented by reg 3 (2) of The Plant Breeders’ Rights (Amendment etc.) (EU Exit) Regulations 2019.  The Regulations revoke Regulation 2100/942 and provide for the registration of Community plant variety rights as UK plant breeders' rights and the processing of pending applications for Community rights. The statutory instrument also amends the Plant Varieties Act 1997 and regulations made under that Act.

Geographical Indications:  Art 54 (2) of the withdrawal agreement requires the UK to continue to protect protected designations of origin, protected geographical indications and traditional specialities guaranteed which are protected throughout the EU by Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs (OJ L 343, 14.12.2012, p. 1–29).  That requirement is implemented by The Agricultural Products, Food and Drink (Amendment) (EU Exit) Regulations 2019 (SI 2009 No 1366).  The regulations amend Regulation 1151/2012.  I discussed the UK scheme in Geographical Indications in the UK after 31 Dec 2020 in NIPC Law on 30 Sept 2020 and in The New Protected Food Names Scheme as it will apply in Wales on 26 Oct 2020 in NIPC Wales.

Supplementary Protection Certificates:   Such certificates protect the active ingredients of patented pharmaceutical or plant protection products. for up to 5 years (and in the case of products used to treat children's diseases an extra 6 months)  from the expiry of a patent for such a product. Art 60 (1) of the withdrawal agreement provides for Regulation (EC) No 1610/96 and Regulation (EC) 469/2009 to continue to apply to applications for SPCs lodged before 23:00 on 31 Dec 2020.  That provision is implemented by the incorporation of those regulations into the laws of the UK and their amendment by Part 6 and Part 8 of The Patents (Amendment) (EU Exit) Regulations 2019 as amended.   Further amendments have been made by The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020.

Exhaustion of Rights:  Art 61 of the withdrawal agreement is implemented by the Intellectual Property (Exhaustion of Rights) (EU Exit) Regulations 2019 as amended by The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020.

The Intellectual Property Office's news story Intellectual property after 1 January 2021 summarize the changes brought about by this legislation.

Unitary Patent and Unified Patent Court

No provision was made for the unitary patent or the Unified Patent Court in the withdrawal agreement even though such a patent and court had been longstanding objectives of British diplomacy and London was to have hosted part of the Central Division of the Court of First Instance and had fitted out the accommodation for such a court at some expenses. For several years after the referendum, the government argued that it should be possible for the UK to participate in the project as the Unified Patent Court Agreement was an international treaty outside the scope of the European Union.   Mr Boris Johnson MP in his role as Foreign Secretary actually deposited an instrument of ratification of the Agreement on 26 April 2018 (see British Ratification of the UPC Agreement - Possibly the best thing to happen on World Intellectual Property Day  26 April 2018 NIPC News).  Less than 2 years afterwards the government changed its mind and withdrew from the project on 20 July 2020 (see Volte Face on the Unified Patent Court 29 Feb 2020 NIPC News and Unified Patent Court Ratification Bill clears Lower House of the German Federal Parliament  30 Nov 2020).

Trade and Cooperation Agreement

On 24 Dec 2020, negotiators for the European Commission and the British government concluded a Trade and Cooperation Agreement to govern the UK's future relationship with the EU.  The Agreement was ratified by the European Union (Future Relationship) Act 2020 on 30 Dec 2020.   Title V of Part Two of the Trade and Cooperation Agreement contained a large number of provisions relating to IP which I discussed in The IP Provisions of the EU-UK Trade and Cooperation Agreement on 30 Dec 2020.  However, none of those provisions appears to require implementing legislation for the time being and there was no mention of intellectual property in the Future Relationship Act.

Further Information

I intend to give a talk on these provisions over Zoom between 16:30 and 18:00 on Tuesday 26 Jan 2021.  This talk will be free but attendees should register in advance here.  Anyone wishing to discuss this article or any of its contents may call me on +44 (0)20 7404 5252 during normal office hours or send me a message through my contact form.