Unified Patent Court Opening Soon

Jane Lambert

According to its Implementation Roadmap, the Unified Patent Court ("UPC") will open for business on 1 April 2023.  It published a list of judges on 19 Oct 2022 (see Unified Patent Court judicial appointments and Presidium elections 19 Oct 2022) and will launch a new website on 7 Nov 2022 (see New Unified Patent Court website launch 13 Oct 2022).

The UPC judiciary will consist of 85 judges.   Thirty-four of them are legally qualified and fifty-one technically qualified.  The President of the Court of Appeal will be Klaus Grabinski, a justice of the German Supreme Court, and the President of the Court of First Instance will be Florence Butin of the Paris Court of Appeal.  Sadly there will be no British judges despite the contribution of British lawyers and others to the UPC's establishment because of the British government's withdrawal from the UPC Agreement (see Volte Face on the Unified Patent Court Agreement 29 Feb 2022 NIPC News).

The announcement of a new UPC website states that it will contain the following information:

• Court locations;
• Registry and Sub-Registries contact information;
• Legal documents published;
• Committees Representatives;
• Official communications from the UPC;
• Job vacancies
• Information on the judges.

Even though the UPC will have no jurisdiction over the UK, a court that will cover the territories of most of the EU member states will be of interest to British businesses and institutions.   It should simplify enforcement and reduce costs and the uncertainties of litigation.

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

European Commission - "Getting Ready for Changes"

By Rolf Süssbrich - Own work, CC BY-SA 3.0, 

https://commons.wikimedia.org/w/index.php?curid=863700

Jane Lambert

On 9 July 2020, the Commission published a communication entitled Getting ready for changes Communication on readiness at the end of the transition period between the European Union and the United Kingdom to the European Parliament, the Council, the European Economic and Social Committee and the Committee of the Regions (COM(2020) 324 final).  While negotiations for a new relationship between the UK and the EU are intensifying the communication nites that even if the parties were to conclude an ambitious partnership covering all areas agreed in the Political Declaration such an agreement would create a relationship which will be very different from the United Kingdom’s participation in the EU Single Market and Customs Union, and in the VAT and excise duty area.  It will inevitably create barristers to trade in goods and services and cross-border mobility and exchanges that do not exist today.

The communication considers the changes that will be required in the following sectors:

• Trade in goods
• Trade in services
• Energy
• Travel and tourism
• Mobility and social security coordination
• Company law and civil law
• Intellectual property
• Data protection
• International agreements.

For each of those topics, there is a statement of principle followed by "Advice to Businesses and Member State Administrations".   For "Intellectual Property", for instance, there is a statement that the exhaustion of rights principle will continue until 31 Dec 2020.  That is followed by the warning:

"As of 1 January 2021, traders in the European Union can no longer invoke exhaustion vis-àvis right-holders when sourcing products from the United Kingdom."

The advice to Businesses and Member State Administrations is:

"Businesses engaged in parallel trade from the United Kingdom should re-visit their business arrangements."

The communication also notes that while existing EU unitary intellectual property rights (EU trade marks, Community designs, Community plant variety rights and geographical indications) remain protected under the Withdrawal Agreement, any new EU unitary rights will have a reduced territorial scope as they will no longer have effect in the UK.

The British government has also started a publicity campaign to prepare the public for these changes.  Yesterday it distributed by email to my and other subscribers an op-ed that the Rt Hon Michael Gove MP had published in The Daily Telegraph entitled "Outside the EU, a bright future awaits Britain."

Anyone wishing to discuss this article or the legal consequences of the end of the transition period should call my clerk, Stephen, on 07986 948267 or send me a message through my contact page.

Barnier and Frost talk at last

Foto-AG Gymnasium Melle / CC BY-SA
(https://creativecommons.org/licenses/by-sa/3.0)

Jane Lambert

Negotiations for a new partnership between the Europen Union and the United Kingdom took place in Brussels between 2 and 5 March 2020 (see Negotiation rounds on the future partnership between the European Union and the United Kingdom).  Those negotiations were due to continue through March and April 2020 as set out in the Terms of Reference on the UK-EU Future Relationship Negotiations). For various reasons, those negotiations did not resume until 15 April 2020.

According to a Joint statement by EU and UK negotiators following the videoconference on 15 April 2020, the two sides took stock of the technical work that has taken place since the first negotiating round on the basis of the legal texts exchanged by both sides.  The reference to an "exchange of texts" is interesting because the public was aware of a draft agreement that had been proposed by the Commission on 18 March 2020.  The initial British response was that a legal text covering the outstanding areas would be produced at a time of the British government’s choosing  (see Jane Lambert EU's Draft Agreement on a New Partnership with the UK 29 March 2020).  That text, which is still to be published, apparently contained major areas of convergence as well as divergence.

The negotiators agreed to continue negotiations by video conference on the weeks commencing 20 April, 11 May and 1 June. Each negotiating round will last a week rather than the much shorter periods set out in Annex B to the Terms of Reference.

The parties also welcomed the first meeting of the Joint Committee (Implementation of the Withdrawal Agreement - Joint Committee's First Meeting  31 March 2020) and that the proper and timely implementation of the withdrawal agreement including the Northern Ireland Protocol was a key priority for both sides.

Also on 15 April 2020, the Managing Director of the IMF called for the negotiating period to be extended beyond the 31 Dec 2020 because of the "unprecedented uncertainty" arising from the pandemic.  Mr Frost tried to slap down any suggestion of this kind on twitter:

Extending would simply prolong negotiations, create even more uncertainty, leave us liable to pay more to the EU in future, and keep us bound by evolving EU laws at a time when we need to control our own affairs. In short, it is not in the UK's interest to extend. 2/2

— David Frost (@DavidGHFrost) April 16, 2020

Well that may be Mr Frost's view and it is possibly even his instructions but the world has changed. Coronavirus has laid waste to Italy and Spain but the damage to those countries is greatly exceeded by the loss of life and economic destruction that it has wrought in the USA. America is in no position to make good our restricted access to the European single market. When the facts change maybe the policy should change with them.

Anyone wishing to discuss this article may call me my clerk Stephen Somerville on 07986 948267 or send me a message through my contact form.

The Intellectual Property Provisions of the Draft Withdrawal Agreement

Author Furfur
Licence Creative Commons Attribution-Share Alike 4.0 International

Jane Lambert

Art 126 of the Draft Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community which was published on 14 Nov 2018 provides for a transition or implementation period to begin no later than 29 March 2018 and continue at least until 31 Dec 2020.  During that period, EU law would continue to apply to and subsist in the UK by virtue of art 127.  That would include the legislation establishing EU trade marks, Community designs and plant breeders' rights, geographical indications, database rights and supplementary protection certificates. 

Preservation of EU Intellectual Property Rights

At the end of the implementation period, all IP rights granted under EU law would lapse pursuant to art 50 (3) of the Treaty on European Union.  Arts 54 to 61 of the draft withdrawal agreement make provision for the preservation of those rights as UK intellectual property rights at the end of the implementation period. The draft withdrawal agreement makes no provision for the Unified Patent Court Agreement which is awaiting German ratification.   However, if Germany ratifies the Unified Patent Court Agreement during the implementation period there would appear to be no reason why that agreement should not come into force during that period,  What would happen after that will depend on the terms of the UK's future relationship with the EU.

Future Relationship

As I said in A Withdrawal Agreement Reading Guide of 15 Nov 2018, bullet points for an agreement on the future relationship appear in the Outline of the Political Declaration setting out the Framework for the Future Relationship between the European Union and the United Kingdom,  The bullet point on intellectual property could not be briefer:

• "Protection and enforcement of intellectual property rights beyond multilateral treaties to stimulate innovation, creativity and economic activity."

The words "beyond multilateral treaties" are at least compatible with the possibility of continued British participation in the UPC Agreement.

Trade Marks, Registered Designs and Plant Varieties

Art 54 (1) of the draft withdrawal agreement provides for the conversion of EU trade marks, registered Community designs and plant varieties into corresponding British IP rights:

"The holder of any of the following intellectual property rights which have been registered or granted before the end of the transition period shall, without any re-examination, become the holder of a comparable registered and enforceable intellectual property right in the United Kingdom under the law of the United Kingdom:

(a) the holder of a European Union trade mark registered in accordance with Regulation (EU) 2017/1001 of the European Parliament and of the Council shall become the holder of a trade mark in the United Kingdom, consisting of the same sign, for the same goods or services;
(b) the holder of a Community design registered and, where applicable, published following a deferral of publication in accordance with Council Regulation (EC) No 6/2002 shall become the holder of a registered design right in the United Kingdom for the same design;
(c) the holder of a Community plant variety right granted pursuant to Council Regulation (EC)No 2100/94 shall become the holder of a plant variety right in the United Kingdom for the same plant variety."

Art 55 (1) requires the registration of converted trade marks, design registrations and plant varieties to be free of charge.  The Intellectual Property Office and Plant Variety Rights Office will use data supplied by the EU Intellectual Property Office and Community Plant Variety Office pursuant to art 55 (3).  The UK will honour international trade mark and design applications design applications that designate the European Union during the implementation period pursuant to art 56.

Those new converted rights would be revoked, declared invalid or null and void or cancelled automatically pursuant to art 54 (3) if the corresponding EU right were revoked, declared invalid or null and void or cancelled by any administrative or judicial proceedings which was ongoing before the end of the implementation period.  However, the article makes clear that that would not happen if the grounds of revocation, invalidity or cancellation did not apply to the UK.  In particular, art 54 (5) (b) provides that a converted trade mark will not be revoked on grounds of no genuine use in the EU if it has been put to genuine use in the UK even if the corresponding EU trade mark is revoked.

The priority date for a converted trade mark will be the same as for the corresponding EU trade mark (art 54 (5) (a)). The date of filing or priority of a converted registered design or plant variety right shall be the same as for the corresponding Community right (art 54 (6) (b)). Arr 54 (5) (c) entitles the proprietor of a converted trade mark that has acquired a reputation in the EU before the end of the implementation period to sue under s,10 (3) of the Trade Marks Act  1994.   The renewal date for converted trade marks and registered designs in the UK would be the same as for the corresponding EU trade mark or registered Community design in the EU (art 54 (4)).  The term of protection for a converted registered design or plant variety right in the UK shall be at least as long as the remaining period of protection for the corresponding registered Community design or plant variety in the EU (art 54 (6) (a)).

Where an application for an EU trade mark or registered Community design is made but not granted during the implementation period. art 59 (1) entitles the applicant to apply for  UK trade mark or, as the case may be, registered design with the same priority date as the EU trade mark or registered Community design so long as the application is made within 9 months of the end of the implementation period. Art 59 (2) provides a similar right for applicants for Community plant varieties save that the application must be made within 6 months of the end of the implementation period.

Unregistered Community Designs
The UK is required by art 57 to create an unregistered design right equivalent to unregistered Community designs and to protect unregistered Community designs that come into being before the end of the implementation period under that new right.

Database Rights
Art 58 (1) requires the UK to continue to recognize database rights that are acquired before the end of the trnsition period  to the same extent as they are protected in the remaining member states provided that holders of those rights continue to comply with the qualification requirements set out in art 11 of Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases (OJ L 77, 27.3.1996, p. 20).  Conversely, British nationals will continue to enjoy database rights that are acquired in the remaining member states before the end of the implementation period.

Supplemental Protection Certificates
Applications to the IPO for supplemental protection certificates in respect of plant protection and medicinal products within the transition period but not yet granted will be treated as though they had been granted during the implementation period (art 60).

Geographical Indications
Art 54 (2) requires the British government to pass legislation to protect in the UK geographical indications, designation of origin or traditional specialities in the same way and to the same extent as they are protected in the EU.  Any such right subsisting in the EU at the end of the implementation period will continue to apply in the UK after the end of that period,  Such right shall cease to apply in the UK if it ceases to apply in the EU.

Further Information
It is stressed that these arrangements shall apply only if the withdrawal agreement comes into force. Should it fail to do so readers should consult the guidance that has been given by the British government in the event of the UK's departure from the EU without a withdrawal agreement (see IP after Brexit - the Government's Guidance  22 Oct 2018 NIPC Law, Patents if there’s no Brexit Deal 3 Oct 2018 NIPC Brexit, Geographical Indications after Brexit 6 Oct 2018 NIPC Branding, EU Trade Marks and Community Designs after Brexit 15 Oct 2018 NIPC Brexit, Copyright and Related Rights after Brexit 19 Oct 2018 NIPC Brexit, and Plant Breeders' Rights after Brexit 21 Oct 2018 NIPC Brexit).

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

No Fudge - the Next Stage of Negotiations between the EU and UK

Author Siona Watson (originally posted to Flickr as STP62099)
Licence CC BY 2.0
Source Wikimedia Commons

Jane Lambert

In my December Brexit Briefing 9 Jan 2018 I wrote:

"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)."

There are some, particularly in the UK, who regard  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 that made it possible for the negotiations to move beyond citizens' rights, the financial settlement and Ireland as something of a fudge.

Whether or not that is the case, Monsieur Michel Barnier, the Chief Negotiator for the Commission, does not appear to be buying any,  In a speech that he delivered on 9 Feb 2018, Monsieur Barnier noted that both sides acknowledge the need to preserve the Good Friday agreement but added

"it is important to tell the truth. A UK decision to leave the Single Market and the Customs Union would make border checks unavoidable."

The British government appears to believe that there are "specific solutions to the unique circumstances on the island of Ireland" but it has not yet announced what they are. In the meantime, the Commission seeks to include in the withdrawal agreement a guarantee that there will be no hard border between Northern Ireland and the Irish Republic in any circumstances.

In the same speech, Monsieur Barnier made clear that the offer of a transition or implementation period between 29 March 2019 and 31 Dec 2020 "is not a given." He flagged up plenty of potential deal breakers of which the role of the Court of Justice of the European Union on the resolution of any disputes on EU law, the rights of EU citizens who enter the UK during the implementation period, the British government's insistence on rights to object to new laws affecting its interests and to opt into new laws on Justice and Home Affairs are just a few.

If negotiations break down, the country will exit the EU in just over 14 months time without a deal.  That would be a problem for many in the remaining member states but not a disaster.  For the UK it  could well be worse.  If the BuzzFeed disclosures are to be believed, that would be the worst possible outcome for many regions of the UK and much of British industry.

Anyone wishing to discuss this article 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.

Sur Le Pont David Non ...... Mr Davis's "Bridge"

By Chiugoran (Own work) 

CC BY-SA 3.0 (https://creativecommons.org/licenses/by-sa/3.0)

via Wikimedia Commons

Jane Lambert

In my December Brexit Briefing 9 Jan 2018 I listed the terms of the transitional or implementation period between 30 March 2019 and 31 Dec 2020:

• "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."

Mr Jacob Rees-Mogg MP has described that as vassal status and while I don't agree with him on much it is hard to disagree with his description of a status in which we shall be subject to laws of which we shall have no part in making.

It is the Rt Hon David Davis MP's job to dislodge the remaining 27 EU member states from that position or to sell that deal to the British people if he is unable to shift the remaining states. In a speech in Teesport entitled Implementation Period – A bridge to the future partnership between the UK & EU 26 Jan 2018 the deal selling process appears already to have begun.

Mr Davis described the implementation period as a "bridge ....... to our new relationship with the European Union after Brexit." Mr Davis's former colleague, Stephen Dorrell, lambasted that bridge on tonight's Any Questions as a bridge with missing arches and that put me in mind with that famous bridge in Avignon where they lead a merry dance round and round (my translation of On y danse tous en rond).

And this is how Mr Davis proposes to sell the above terms:

"For such a period to work, both sides must continue to follow the same, stable set of laws and rules.
Without compromising the integrity of the single market, and the customs union to which we will maintain access on current terms.
Maintaining the same regulations across all sectors of the economy — from agriculture to aviation, transport to financial services, as part of a new international treaty.
In keeping with the existing structure of EU rules that will allow a strictly time-limited role for the European Court of Justice during that period.
During this implementation period, people will of course be able to travel between the UK and EU to live and work.
And as agreed in December, we will fulfil the financial commitments we have made during the period of our membership."

Mr Davis acknowledges that

"Of course, we will leave the institutions of the Union next March"

But that won't matter because "it usually takes around two full years for major legislation to make its way through the European Union system into law – virtually all of the laws that will come into effect during this time will have been drafted while the United Kingdom was a Member State." Not necessarily, Mr Davis. When the EU wants to do something it can move very quickly indeed.  Remember the export bans on British beef after the bovine spongiform encephalopathy outbreak or the livestock movement restrictions to contain foot and mouth disease.

It is clear from the slides that the Commission has uploaded to its website on police and judicial cooperation, security, defence and foreign policy, governance, aviation and fisheries that we can expect no special favours as a third country whether during the implementation period or afterwards.

Should anyone wish to discuss this article or Brexit in  general, call me on +44 020 7404 5252 during office hours or send me a message through my contact form.