Intellectual Property in St Helena

This image was taken by the NASA Expedition 19 crew. - NASA Earth Observatory, Public Domain,
https://commons.wikimedia.org/w/index.php?curid=7030157

Jane Lambert
 

I have recently come across St. Helena Coffee.  It is very rare and very expensive because it is cultivated in modest quantities on a tiny island in the South Atlantic and has very special qualities.  When I first learned of the product, its geographical indication seemed an obvious candidate for legal protection.  When I tried to check it out, I could find no registration under either the UK's protected food names scheme or as a collective or certification mark under s.49  or s.50,  The only registration that I have been able to find is THE ISLAND OF ST HELENA COFFEE COMPANY for goods in classes 16 and 30 by David Henry under trade mark number UK00002192111.

I also found several other products whose geographical indications might benefit from legal protection.  These include rock lobster, tuna, honey and various liqueurs made from local coffee, prickly pears and rum.  St Helena’s Sustainable Economic Development Plan 2018 - 2028 published by the territory's government mentions viticulture on page 26.

Other projects in the plan include opening satellite ground stations and call centres,  encouraging software development and maintenance services, hosting academic research and letting out its locations for filming and programme making.  All those initiatives will require robust copyright, database right and trade secrecy laws.

There is no intellectual property office on St Helena but the territory's legislature has passed legislation to extend United Kingdom patents, trade marks and designs to the island.   S.2 (1) of the Patents (Registration) Ordinance 1927 entitles any grantee of a patent in the United Kingdom or any person deriving a right from such grantee by assignment, transmission or other operation of law may apply within 3 years from the date of issue of the patent to have the patent registered in St Helena.   Upon receiving such an application together with two certified copies of the specification and certificate of grant the registrar must issue a certificate of registration. The certificate of registration confers on the applicant privileges and rights, subject to any conditions established by the law of St Helena, as though the patent had been issued in the United Kingdom with an extension to St Helena.   S.3 and s.6 of the Trade Marks (Registration) Ordinance, 1949 make similar provision for trade marks.  S.2 of the United Kingdom Designs (Protection) Ordinance, 1930 confers upon the registered proprietor of any design registered in the United Kingdom under the Registered Designs Act, 1949 the like privileges and rights as though the certificate of registration in the United Kingdom had been issued with an extension to St. Helena.  

S.3 of the United Kingdom (Design) Ordinance, which restricts recovery of damages where a defendant was unaware of the registration of a design, is a little anomalous in that it refers to "copyright in a design" despite the extensive amendments to the statute by the Copyright, Designs and Patents Act 2025 and the Registered Designs Regulations 2001.  The intention of the legislature appears to be clear but I have not yet found a case on the point.

I have been unable to find any copyright, rights in performances, unregistered design right or trade secrets ordinance but s.3 (1) of the English Law (Applications) Ordinance 2005  applies Adopted English Law to St Helena.  "Adopted English Law is defined as:

"(a) the common law of England, including the rules of equity; and 

(b) the Acts of Parliament which are in force in England at the time of commencement of this Ordinance."

This is qualified by s.3 (2) which provides that the Adopted English Law applies to St Helena only in so far as it is applicable and suitable to local circumstances, and subject to such modifications, adaptations, qualifications and exceptions as local circumstances render necessary.  S.4 (1) further provides that The Adopted English Law applies to St Helena only insofar as it is not inconsistent with— 

"(a) any enactment of the Parliament of the United Kingdom which extends to St Helena otherwise than by virtue of this Ordinance; 4 

(b) any Order of Her Majesty in Council which extends to St Helena otherwise than by virtue of this Ordinance; 5 or 

(c) any provision made by or under any law enacted by a legislature in St Helena." 

Some UK statutes, such as the Freedom of Information Act 2000 and the Human Rights Act 1998, have been disapplied from St. Helena.   However, I have found no disapplication of the Copyright, Designs and Patents Act 1988 or the law of confidence.   S.8 of the Trade Marks (Registration) Ordinance 1949 specifically preserves the action for passing off.

Actions for the infringement or revocation of intellectual property rights are brought in the Supreme Court of St Helena.   Appeals lie to the Court of Appeal and thence to the Privy Council

Belinda Piek is the Registrar of Patents and Trade Marks in St. Helena.  There do not appear to be any patent or trade mark attorneys on St Helena.  Indeed, there seem to be no solicitors in private practice on the island.  Legal services are supplied to the public by the Public Solicitor.  Neither the Public Solicitor nor any of his staff claims expertise in intellectual property.

As the population of the island has been in decline for many years and has only recently flattened out to 4,439 according to the latest census, readers may well ask themselves why I have spent time on researching its intellectual property laws.  The answer is that St Helena’s Sustainable Economic Development Plan 2018 - 2028 contains many reasonable proposals for the economic development of the territory but does not mention intellectual property.   On page 45, there is a non-exhaustive list of opportunities for entrepreneurs.  Entrepreneurs will respond only if their intellectual assets are protected sufficiently to ensure a reasonable return.  Such assets must be protected not only in St Helena but also in the United Kingdom and their other markets around the world.   

The UK and St Helena governments have already shown their commitment to St. Helena by investing some £285.5 million in the construction of a new airport. They had hoped it would increase tourist traffic from a few hundred a year to over 30,000.   Since there are only weekly flights to South Africa, that is unlikely to happen.  However, if the airport could be used to export the island's coffee and other premium beverages and foodstuffs to affluent consumers around the world and remain the port of entry for satellite tracking engineers, film and TV programme makers and actors, conference attendees and others, it could easily justify that investment.

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

Further Information

Smudge Dog Media: The Challenges of St Helena's Entrepreneurs YouTube 

IP in Canada

Author John Picken Licence CC BY 2.0 Source Wikimedia Commons

Jane Lambert

On 30 Jan 2023, I discussed the Intellectual Property Office's guidance on  IP in New Zealand  (see IP in New Zealand).  The IPO has published similar guidance entitled IP in Canada.  Like the New Zealand guidance, it covers trade marks, patents, designs, copyrights and enforcement.  It has links to the Department for International Trade's Exporting Guide to Canada and Report a Trade Barrier pages, the British Canadian Chamber of Trade and Commerce and the UK's IP attaché for North America at the British embassy in Washington DC.

The guidance states that the intellectual property authority for Canada is the Canadian Intellectual Property Office ("CIPO").   According to its home page, CIPO is a special operating agency of Innovation, Science and Economic Development Canada which delivers intellectual property services in Canada and educates Canadians on how to use IP more effectively.  Its services include examining applications for patents, trade marks and industrial designs and the registration of copyrights and integrated circuit topographies. Its education, tools and resources include information on green technology. managing IP, data and research, an IP academy, an IP hub, an IP toolbox, events, webinars and seminars, a newsletter and other publications.  CIPO also publishes several blogs.

It would appear from the guidance that Canadian trade mark, patent, industrial designs and copyright laws are similar to ours.  The main differences seem to be a grace period for patents and a registration system for copyrights,  Applications for patents, trade marks and designs can be made directly to CIPO or through international conventions.

Infringement actions can be brought in the civil courts although the guidance warns that litigation is expensive and time-consuming.   Arbitration, mediation and expert determination are also available,  Information on enforcement can be obtained from the IPHub Enforcement/Infringement.  The Canadian Border Services Agency can intercept and detain counterfeit goods or pirate copies of copyright works.

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

IP in New Zealand

Author Maungatautari Ecological Island Trust Licence Public Domain

 

Jane Lambert

On 19 Dec 2022, the Intellectual Property Office published Guidance on IP in New Zealand.  The Guidance covers trade marks, patents, designs, copyrights and enforcement.  It has links to the Department for International Trade to report trade barriers and the British New Zealand Business Association for advice on doing business in New Zealand.

The Guidance introduces readers to the Intellectual Property Office of New Zealand ("IPONZ") which registers patents, trade marks, designs, plant varieties and geographical indications.  It also offers guidance on copyrights, trade secrets, domain names and company names.  Applications for NZ patents, trade marks or designs can be made directly to IPONZ  or through international conventions.   Important differences appear to be grace periods for patents and designs, the requirement of an address for service in Australia or New Zealand and a 50-year copyright term.

IP owners can bring infringement proceedings through the civil courts though there is a warning in the Guidance that "this can often be very time consuming and expensive."  Alternative dispute resolution procedures such as mediation, arbitration and expert determination are said to be available.  There are also customs procedures to prevent the importation of infringing articles and criminal penalties for copyright piracy and counterfeiting,  There is a link to a page on IP Enforcement which is maintained by the New Zealand Ministry of Business, Innovation and Employment.

Readers will find more information about this topic on my New Zealand page.  Anyone wishing to discuss this topic may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

India Free Trade Agreement Negotiations

 

Jane Lambert

According to the IP Helpdesk, negotiations between the British and Indian governments were given fresh impetus by the meeting of those countries' prime ministers at the G20 Summit in Bali (see UK – India Free Trade Agreement Going Forward 9 Dec 2022).  That news article envisages negotiations to be completed within  5 to 6 months. The IP Helpdesk news article accords with a press release from Kemi Badenoch MP and the Department for International Trade entitled: "Trade Secretary to lead next round of trade negotiations on first visit to India" dated 12 Dec 2022.

The article states that the issues that remain to be resolved include access of Indian films to the British market and "specific rules within the patent regime" on the Indian side and Indian duties on spirits and motor vehicles on the British side. Facilitating the mobility of professionals thereby strengthening both countries’ labour markets is said to be an issue for both parties.

This last issue is echoed in the British press release:

"The talks – the first formal round since July – will target a deal to cut tariffs and open opportunities for UK services such as financial and legal, making it easier for British businesses to sell to an economy set to be the world’s third largest - with a middle class of 250 million people - by 2050."

While she is in India, the International Trade Secretary will meet envoPAP, a UK company investing over £10 million to construct a plant to produce paper and packaging products in India.  The press release also mentions initiatives in India by other British-based businesses including Pret a Manger, tide and Revolut. Exports to India are expected to grow by over £9 billion by the middle of the next decade.

I shall continue to monitor the negotiations and will update readers on significant developments. particularly those relating to IP.  Anyone wishing to discuss this article should call me on +44 (0)20 7404 5252 during UK office hours or send me a message through my contact page. 

REUL Bill First Update

Intellectual Property Office

Crown Copyrights  Open Government Licence

 

Jane Lambert

In Retained EU Law (Revocation and Reform) Bill (26 Oct 2022), I mentioned the introduction and second reading of that bill.  In that article, I wrote that the purpose of the bill s to enable the government to remove the special features of retained European Union law ("REUL") from the English and Welsh, Scottish and Northern Irish legal systems by the end of 2023.  I added that the bill if passed was likely to affect intellectual property law in the United Kingdom because much of that law implements EU legislation and case law.  For that reason, I offered to follow the progress of the bill and its application to intellectual property law.

According to the UK Parliament's website, the bill has completed the report stage and is now at the report stage.  A copy of the bill as amended in committee can be found here.   Anyone interested in what was said in Parliament about the bill can consult Hansard here.

On 29 Nov 2022, the Intellectual Property Office published updated guidance on the bill.   It consists of a list of retained EU law, as defined in s. 6 (7) of the European Union (Withdrawal) Act 2018.  Such law relates to intellectual property within the policy remit of the IPO and does not address issues that lie outside such as plant varieties or rights arising at common law.  The list covers copyrights, designs, patents, trade marks and enforcement.  Readers will see that it is quite long enough.

I shall continue to monitor the progress of the bill and report any other useful materials on the topic that come to my attention.  In the meantime, anyone who is interested in the topic may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

Protecting Intellectual Assets Abroad

World Intellectual Property Organization ("WIPO") Geneva

Author Emmanuel Berrod  Licence CC BY-SA 4.0  Source  flicker

 

Jane Lambert

Whenever an inventor applies for a British patent, he or she makes a bargain with the British public.  In return for disclosing "the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art" the inventor is granted a monopoly of the the invention  in the United Kingdom for up to 20 years.   Folks outside the United Kingdom are not privy to that agreement so unless the inventor applies for patents elsewhere, there is nothing to stop a competitor from making, selling  or using the invention overseas.

As other countries' patent laws require the invention to be new at the time of the application, inventors had to apply for patents simultaneously to the intellectual property offices of all the countries in which they sought patent protection.  As can be imagined, that could be expensive and complicated.  The financial and administrative burden was mitigated by the Paris Convention for the Protection of Industrial Property which allowed applicants to backdate their applications to the date of their first application provided they filed their second and subsequent applications within a year of the first application.  That is known as a "right of priority" which is granted by art 4 of the Convention.

Having 12 months in which to file foreign patent applications certainly made life easier for applicants but they still had to make separate applications to each intellectual property office.  On 17 Oct 1977, the European Patent Convention ("EPC") came into force.   The EPC established the European Patent Office ("EPO") which grants patents known as "European patents" for the territories of the governments that are party to that Convention.   Despite their name, European patents are not patents for the whole continent or even the European Union.  They are granted for designated contracting states 

on behalf of the governments of those states.  A European patent designating the UK is known as a European patent (UK) and is treated for almost all practical purposes as if it had been granted by the Intellectual Property Office.in Newport.  The great advantage of applying to the EPO is that applications can be made simultaneously for European patents for up to 39 states from a single filing.  

On 1 June 1978, the Patent Cooperation Treaty ("PCT") came into force.   That Treaty enables patent applications to be made simultaneously to up to 156  states from a single filing.   Applications can be made directly or indirectly to the World Intellectual Property Organization ("WIPO") which is the UN specialist agency for intellectual property.  If requested, the WIPO will carry out an international preliminary examination which will examine the invention for novelty, inventiveness and utility.  If the examination is favourable the applicant can ask for the application to be forwarded to the national intellectual property offices for further consideration.   More information on the EPO and PCT is offered by the IPO in Protecting Your Patent Abroad which was last updated on 1 July 2022.

Art 4 of the Paris Convention confers a 6-month right of priority from the date of the first application upon applicants for trade marks and registered designs.  While the UK was in the European Union, applicants had the choice of applying to national intellectual property offices for the registration of national trade marks or designs or to the European Union Intellectual Property Office ("EUIPO") for the registration of European Union trade marks or registered Community designs which applied to the UK and the other 27 member states of the EU. Since 31 Dec 2020 EU trade marks and registered Community designs have continued to apply to the remaining 27 member states but not here.  Accordingly, UK brand or design owners can still apply to the EUIPO for new EU trade mark or RCD registrations.

Just as the PCT enables applications to be made for patents in many countries from a single filing the Madrid Protocol facilitates multiple trade mark applications from a single filing.   Updated guidance on applications for EU trade marks and the Madrid Protocol is provided by the IPO in Protecting your trade mark abroad.  Similarly, the Hague Agreement permits multiple design registration applications from a single filing.   Details on applications for registered Community designs and under the Hague Agreement are available from the IPO in Protecting your Design Abroad.

Owners of UK copyrights will acquire automatically corresponding local copyrights in countries that are party to the Berne Convention for the Protection of Literary and Artistic Works.  Similarly, owners of rights in performances in the UK will acquire automatically local corresponding rights in countries that are party to the Rome Convention (International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations).   Guidance from the IPO is in Protecting your Copyright Abroad.  

There is no equivalent to unregistered design right in most countries.  In some, however.  designs that are protected by unregistered design rights in the UK may be registered as utility models which are unknown in this country.

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

IP Dispute Resolution before the Netherlands Commercial Court

Amsterdam

Author Ank Kumar  Licence CC BY-SA 4.0   Source Wikimedia

 

Jane Lambert

The Netherlands Commercial Court is a chamber of the Amsterdam District Court which conducts proceedings and delivers judgments in English,  I discussed its formation in The Netherlands Commercial Court - an English Speaking Court in Amsterdam on 2 Aug 2020.

The Court publishes a bimonthly newsletter called NCC News Update.  A recent issue announced that several judges specializing in intellectual property law had joined the Court.  According to the fact sheet NCC and Intellectual Property, those judges are:

• Judge Diekman (Rotterdam District Court) 
• Judge Van Heemstra (Gelderland District Court) 
• Judge Loos (The Hague District Court) 
• Judge Hofmeijer-Rutten (Rotterdam District Court and Amsterdam Court of Appeal) 
• Judge Tjong Tjin Tai (sitting by designation) (Professor of Private Law at Tilburg University, specializing in IP and IT law), and
• Judge Bernt Hugenholtz (sitting by designation) (Professor of IP Law at the University of Amsterdam).

The NCC cannot try patent infringement or validity claims because these are reserved for the Hague District Court as are plant variety and EU trade mark and Community design cases but it can hear everything else including licensing and other disputes arising relating to patents, plant varieties and EU trade mark and Community designs.   Its jurisdiction therefore covers copyright, Benelux trade marks and designs, rights in performances, trade secrets and unfair competition cases.   

This court could be a serious competitor to London in that costs are lower and its judgments can be enforced throughout Europe under the Brussels Recast Regulation (see NCC and other European commercial courts.   English lawyers lost their rights of audience when the UK left the European Union but judges will allow them occasionally to make written or oral submissions  (see FAQ  "Can a foreign lawyer speak in court").

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

IPO's Guidance on Australia

Australian Swagman

Unknown author - NSW GovtPrinter,
Public Domain,

Jane Lambert

On 28 June 2022, the UK Intellectual Property Office published a new intellectual property guide to Australia.  This one-page guide contains information on the following topics:

• Trade marks
• Patents
• Designs
• Copyright
• Enforcement, and
• Sources of further information.

The guide does not mention the phasing out of utility models known as "innovation patents" which once attracted considerable interest from inventors and their advisors in the UK.  Nor does it mention plant breeders' rights which are important to a major food and wine producing nation.  

The reason for the publication is that Her Majesty's Government has recently negotiated a free trade agreement with the government of Australia.  There are already strong ties between the two countries. The IPO's press release states that there are a million UK citizens in Australia and that the UK's trade with that country was just under £10 billion in 2021.  When the free trade agreement comes into force, the IPO expects more opportunities for British companies in digital and services as well as luxury and other high-value goods.

I outlined the free trade agreement in The Free Trade Agreement with Australia on 20 Dec 2021.  I discussed the IP provisions of the agreement in Intellectual Property Articles of the Australia-UK Free Trade Agreement: General Provisions on 3 Jan 2022.   Readers will find links to all the resources that I have collected on Australia on my "Australia" page.

Anyone wishing to discuss this article or any of the topics mentioned in it may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

The Free Trade Agreement with Australia

Discovery House, Head Office of IP Australia

Author Bidgee Licence CC BY-SA 3.0 Source Wikimedia Commons

 

Jane Lambert

On 16 Dec 2021, the Secretary of State for International Trade signed the Australia-UK Free Trade Agreement (see the Department for International Trade's press release of 16 Dec 2021). The Agreement had been agreed in principle by the Prime Ministers of the two countries as I noted in The Proposed Australia-UK Free Trade Agreement on 17 June 2021. The full text of the Agreement can be found on the Australian Department of Foreign Affairs and Trade website.

The Agreement consists of a Preamble, 32 chapters of substantive provisions some of which have their own annexes, four annexes and several side letters. The chapters cover:

• Chapter 1 Initial Provisions and General Definitions, 
• Chapter 2 Trade in Goods,
• Chapter 3 Trade Remedies 
• Chapter 4 Rules of Origin and Origin Procedures
• Chapter 5 Customs Procedures and Trade Facilitation,
• Chapter 6 Sanitary and Phytosanitary Measures
• Chapter 7 Technical Barriers to Trade,
• Chapter 8 Cross Border Trade in Services,
• Chapter 9 Financial Services,
• Chapter 10 Professional Services and the Recognition of Professional Qualifications,
• Chapter 11 Temporary Entry for Business Persons,
• Chapter 12 Telecommunications,
• Chapter 13 Investment,
• Chapter 14 Digital Trade,
• Chapter 15 Intellectual Property
• Chapter 16 Government Procurement,
• Chapter 17 Competition Policy and Consumer Protection,
• Chapter 18 State-Owned Enterprises and Designated Monopolies,
• Chapter 19 Small and Medium-Sized Enterprises,
• Chapter 20 Innovation,
• Chapter 21 Labour,
• Chapter 22 Environment,
• Chapter 23 Development,
• Chapter 24 Trade and Gender Equality,
• Chapter 25 Animal Welfare and Antimicrobial Resistance,
• Chapter 26 Good Regulatory Practice,
• Chapter 27 Cooperation,
• Chapter 28 Transparency and Anti-Corruption,
• Chapter 29 Administrative and Institutional Provisions,
• Chapter 30 Dispute Settlement,
• Chapter 31 General Provisions and Exceptions,
• Chapter 32 Final Provisions.

Chapter 15 consists of 96 articles on intellectual property starting with "Definitions" in art 15.1 and finishing with "Environmental Considerations in Destruction and Disposal of Infringing Goods" in art 15.96.  The Chapter is divided into the following sections:

• A.  General Provisions: includes definitions, objectives, principles, understandings in respect of the objectives etc.;
• B. Cooperation: committee on IP rights, patent cooperation and work-sharing etc.;
• C. Trade Marks and domain names;
• D: Geographical indications;
• E: Patents and data;
• F: Undisclosed data;
• G: Registered industrial designs;
• H: Copyright and related rights;
• I:  Trade secrets; and
• J:  Enforcement.

I shall consider the various provisions of Chapter 15 and how they might affect IP practice in the UK in due course.

Anyone wishing to discuss this article may call me on 020 7404 5252 during office hours or send me a message through my contact form at other times.

Change of Focus

Author Daniel R Strebe 15 Aug 2011 Copyright waived  Source Wikimedia Commons

Jane Lambert

During the 2016 referendum campaign, I wrote that the United Kingdom's withdrawal from the European Union would profoundly affect the laws that protect investment in branding, design, technology and creativity (see Were we to go - what would Brexit mean for IP 26 Feb 2016 NIPC Law). I noted that the nature and extent of that change would "depend on the sort of relationship with the rest of the EU that we could negotiate in the two years allowed by art 50 (2) of the Treaty on European Union." After a plurality of voters had voted for withdrawal, I followed those negotiations in this blog in order in order to make an educated guess as to how this country's IP law would develop.

Although there may still be further negotiations between the UK and the European Commission over the Northern Ireland Protocol for the reasons I discussed in British Proposals for Renegotiating the Northern Ireland Protocol on 29 July 2021, they are unlikely to result in major changes to this country's IP laws.  The legal framework following Brexit is set out in my article How Brexit has changed IP Law of 17 Jan 2021 and presentation of 26 Jan 2021 (slides and notes).

While bilateral treaties such as the Comprehensive Economic Partnership Agreement with Japan and the proposed Australia-UK Free Trade Agreement contain provisions on intellectual property, it is unlikely that any of them will require amending legislation. What might are the intellectual property provisions of the Trans Pacific Partnership which are incorporated by reference into the Comprehensive and Progressive Agreement for the Trans-Pacific Partnership and Chapter 20 of the Agreement between the United States of America, the United Mexican States, and Canada, the successor to the North American Free Trade Agreement.   I shall therefore focus in future on those developments rather than bad-tempered exchanges arising from the withdrawal and trade and cooperation agreements. 

HMG has embarked on a great experiment of decoupling from neighbours and allies with shared interests in the world's richest trading bloc and forming new relationships with fast growing economies on the other side of the world.  It is by no means certain that that experiment will succeed and my change of focus should not be seen as an endorsement of the experiment. But it is more relevant to the startups and other SME and their professional advisors that form the bulk of my clientele and require practical advice on IP prosecution, licensing and enforcement in the UK and any new markets that may open up as a result of the government's activities.

To reflect the change of focus I shall change the name of this publication from "NIPC Brexit" to "NIPC Internatiomal" and replace the monthly "Brexit Briefings" with targeted updates.   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.

"Global Britain in a Competitive Age"

Author Eric Gaba Licence  CC BY-SA 4.0, Source Wikipedia Indo-Pacific

Jane Lambert

In Global Britain in a competitive age The Integrated Review of Security, Defence, Development and Foreign Policy, the government has spelt out its objective in decoupling the United Kingdom from neighbours and allies with shared interests in the world's richest trading bloc. It may not be an attainable objective or even a desirable one but at least it is ascertainable.  The review reveals the direction of travel the first time since the referendum thereby allowing businesses and individuals to plan for the medium term.

The document consists of five parts and three annexes:

• The first part is the foreword in which the Prime Minister shares his vision for the UK in 2030 (pages 3 to 9).
• The second is headed "Overview" and is effectively an executive summary (pages 11 to 22).
• Part III is the national security and international environment to 2030 (pages 24 to 32).
• The "Strategic Framework" between pages 33 and 95 is the biggest part of the review and consists of 4 topics:
• The first is headed "Sustaining strategic advantage through science and technology" which is to be achieved by growing the UK's science and technology superpower and developing a cyber warfare capability.
• Shaping the open international order of the future which includes an "Indo Pacific Tilt" over 50 tears after Harold Wilson announced the UK's withdrawal from bases east of Suez.
• Strengthening security and defence at home and overseas includes expanding the nuclear arsenal more than 60 years after the cancellation of "Blue Streak".
• Building resilience at home and overseas.
• The last part is on implementation and consists of 2 ½ pages (96 to 99).

Annex A consists of a table listing spending priorities in the latest spending review,  Annex B is headed "Evidence and Engagement" and points to some of the people the authors of this review had consulted, The last annex is a glossary.

As an intellectual property lawyer, I should love to see the UK become a science and technology superpower with vibrant creative industries attracting investment and expertise from around the world.  I just can't see how it is going to happen. China applies for 1.4 million patents every year compared to the UK's 12,000. In the number of patent applications, the UK lies 9th behind China, the USA, Japan, South Korea, Germany, Russia and France (see Knoema Number of patent applications among residents).   In the European Patent Office. it consistently trails the Netherlands and Switzerland with a third and eight of its population respectively (see European patent applications per country of origin).

Although the UK economy may well bounce back once the COVID-19 restrictions are lifted, there is no reason to suppose it will grow consistently at historically unprecedented rates over the next 9 years.  Even on the most optimistic forecasts, it will be overtaken by countries that can take advantage of economies of scale.  According to Statista the UK will slip from 5th place in 2919 to  9th by 2030 behind China with $31,731 billion, the USA with $22,920, India $7,972, Brazil $5,862, Japan $5,852, Russia $4,730, Germany $4,441, France 4,206 and the UK $3,664 (see "The 15 countries with the highest gross domestic product (GDP) in 2030 (in billion U.S. dollars)").  

The review makes only one brief reference to the Belt and Road initiative, a massive road, rail, port and pipeline building project, on page 26 but fails to consider its impact on the world's economy.  It is likely to be massive. It will create a land bridge across the Asian and European continents by lowering the cost and speeding the transit of freight.  By so doing it will integrate the economies of all countries linked to that land bridge and increase still further the economic strength of China.

For this and other reasons, this review probably understates the consequences of the rise of China.  It tacitly acknowledges China's rise by referring in several places to a "multipolar" environment. However, if China has a GDP that is 38% larger than that of the USA the world will be distinctly unipolar.  If there is to be a new international order, Washington's influence will be diminished and that of middle-ranking powers such as the United Kingdom will barely register at all.  

The review makes all sorts of assumptions that may or may not be justified such as a continued union of Scotland, Wales and Northern Ireland with England.  Surely any review of defence policy has to plan for the possibility of the closure of the nuclear facilities on the Forth and Clyde and the loss of military shipbuilding capabilities in Scotland. It should also plan for a resumption of terrorist activity in Northern Ireland if the Good Friday agreement is abandoned for any reason.

Anyone wishing to discuss this article or any of the topics mentioned in it may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

Brexit Briefing April 2020

Author NIAID Licence CC BY 2.0

Jane Lambert

The world has changed since 23 June 2016 and indeed much of that change has occurred since 12 Dec 2019. The United States and the United Kingdom have suffered more deaths from CORVID-19 than any other country and a severe contraction of economic activity. The virus has affected other large countries but not to the same extent.  The other significant event that occurred in April was the announcement that China had overtaken the USA in the number of applications for patents through the Patent Cooperation Treaty for the first time ever (see WIPO PR/2020/848 7 April 2020).  In terms of domestic applications, China is considerably further ahead.  That country filed 1.5 million applications compared to the USA's 597,000 {see World Intellectual Property Indicators 2019 -Patents WIPO 2019).

Despite those changes, British officials are quietly pursuing negotiations that are likely to result in trade barriers with the UK's nearest and largest market from 31 Dec 2020 and an American administration in an election year that is struggling to control the pandemic and the resulting economic downturn.  Such policy would, of course, be justified by the 2016 referendum result and the 2019 general election though it is probably the case that the government won with remainder votes who were more afraid of Corbyn than they were of brexit.

The new relationship negotiations resumed in April as I noted on 18 April 2020 in Barnier and Frost talk at last and two rounds have actually taken place. In a press statement by Michel Barnier following the second round of future relationship negotiations with the UK on 24 April 2020, the EU chief negotiator warned of

"two very real deadlines that we are faced with and which have been set by law:

• 30 June 2020: Will we decide or not, before that date, and by joint decision with the British, to extend the transition period, according to the possibility that is foreseen in the Withdrawal Agreement?

• And, 31 December 2020 – the date of the ‘economic Brexit', following the ‘political Brexit' that took place at the beginning of this year: On this date, which will bring important and definite changes in many areas, will the United Kingdom leave the Single Market and Customs Union with or without an agreement with the EU?"

By a circular dated 29 April 2020, the Commission announced that it had reviewed and updated the plans that it had made for a British departure from the EU without a withdrawal agreement and has set them out in a number of sector readiness notices that can be found on its Getting ready for the end of the transition period page.

In his statement, Monsieur Barnier came close to accusing British officials of negotiating in bad faith. In the Political Declaration that accompanied the withdrawal agreement, both sides made commitments for the future framework that British negotiators refused to discuss except in the most general terms.  There is concern that the British government is failing to implement the provisions of the withdrawal agreement that would enable the border between Northern Ireland and the Republic of Ireland to remain open.  In order to monitor such implementation, the Commission has sought permission to open a representative office in Belfast which was refused by the Paymaster General on 27 April 2020 (see the letter from the Rt Hon Penny Mordaunt MP to Helga Schmid and Michel Barnier).  Further, the only British response to the draft treaty that the Commission proposed to the UK on 18 March 2020 has been a number of text proposals which Monsieur Barnier has been asked not to share with the member states or the European Parliament.

Negotiations began with the US Trade Representative on a trade agreement with the USA on 5 May 2020 after a two-month break with platitudinous statements on both sides (see Joint Statement of UK International Trade Secretary Liz Truss and USTR Robert Lighthizer  5 May 2020 Department for International Trade and Statement of USTR Robert Lighthizer on the Launch of U.S.-UK Trade Negotiations 5 May 2020 Office of the US Trade Representative).   It is worth remembering that any deal with the USA will have to be approved by the US Senate which will have concerns if a largely US brokered peace deal in Northern Ireland breaks down as a result of the failure to honour the commitments on Northern Ireland in the withdrawal agreement.

I shall be updating the EU new partnership negotiations page and the US trade agreement negotiations page.  Ideally, there should be a page on British involvement with the one belt one road initiative and the UK's relationship with China which is already providing much of the investment and technology for the UK's next generation of nuclear power stations, high-speed rail and 5G mobile communications but at the moment that relationship seems to be going nowhere.  Anyone wishing to discuss this article or any of the issues raised in it should call 020 3819 8725while lockdown continues or message me through my contact form.

The Patents (Amendment) (EU Exit) Regulations 2018

Jane Lambert

In Patents if there’s no Brexit Deal 3 Oct 2018, I discussed the government's guidance Patents if there's no Brexit Deal 24 Sept 2018.  I wrote:

"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."

Supplementary legislation to preserve rights subsisting under EU regulations has now been drafted. pursuant to s.8 of the European Union (Withdrawal) Act 2018,

The draft legislation is known as The Patents (Amendment) (EU Exit) Regulations 2018,  There are 69 of those regulations divided into 8 Parts:

• Part 1 (reg 1) Introduction (citation)
• Part 2 (regs 2 - 4) Amendments to the Patents Act 1977
• Part 3 (reg 5) Amendments to the Copyright Designs and Patents Act 1988
• Part 4 (regs 6 - 17) Amendments to The Patents and Plant Variety Rights (Compulsory Licensing) Regulations 2002
• Part 5 (reg 18) Amendments to the Patent Rules 2007
• Part 6 (regs 19 - 36) Supplementary Plant Protection Certificates - Amendments to Reg (EC) No 1610/96
• Part 7 (regs 37 - 50) Compulsory Licensing of Pharmaceutical Patents - Amendments to Reg (EC) No 816/2006, and
• Part 8 (regs 51 - 69) Supplementary Protection Certificates for Medicinal Products - Amendments to Reg (EC) No 469.2009. 

The Patents and Plant Variety Rights (Compulsory Licensing) Regulations2002 (SI 2002/247) implement parts of Directive 98/44/EC on the legal protection of biotechnological inventions. The EU regulations on supplementary protection certificates are directly effective.

SPC (supplementary protection certificates) extend the monopoly granted by a patent for up to 5 years after the patent's expiry to make up for the time needed to obtain regulatory approval for the distribution of the patented invention.   To make sure that SPCs continue to be available, the statutory instrument replaces references to the EU and its institutions or member states with references to the UK, the Intellectual Property Office and other British organizations.

I shall mention this draft legislation at the 11th Annual Forum on Pharma Biotech Patent Litigation in Amsterdam, 26 and 27 Feb 2019. Anyone wishing to discuss this article, the draft statutory instrument or patents and brexit generally should call me on 020 7404 5252 during office hours or sending me a message through my contact form. 

Brexit Briefing October 2018

Original uploader Jonto
Licence: Creative Commons Attribution-Share Alike 3.0 unported
Source Wikipedia 

Jane Lambert

The consequences for the United Kingdon of leaving the EU without a withdrawal agreement on 29 March 2019  anticipated by Her Majesty's government are set out in a series of guidance notes linked to How to prepare if the UK leaves the EU with no deal.  The first batch was published on 23 Aug 2018 and discussed in my article And if there is no deal .................. 24 Aug 2018. In many areas such as, for example, civil litigation which I covered in Trans-Border Litigation after Brexit there will be additional uncertainty, inconvenience and expense and even the possibility of injustice.

Ministers and negotiators on both sides have said that 95% of a draft withdrawal agreement has been agreed but the question of how to retain an open border between the Republic of Ireland and Northern Ireland remains unresolved.  The problem can best be understood in the Infographic on the EU's 'backstop' proposal which was published on 11 June 2018.  An open border is possible because of

• Common tariffs and rules of origin apply to non-EU goods 
• Common VAT and excise area 
• Common product safety and quality standards (e.g. food, chemicals and consumer goods), and a 
• Single epidemiological unit with common rules for animal health and welfare.

After the UK leaves the EU there will be divergence in all those areas necessitating checks and inspections of goods travelling across the border, These need not necessarily take place at the border crossing but they have to take place somewhere.  

The Commission's proposal is for Northern Ireland to remain aligned with the Irish Republic and for checks to take place at the British and Irish ports,  That is rejected by the British government and some Northern Irish politicians as tantamount to annexation of the province.  The counterproposal is a common rulebook for the EU and the whole of the UK.  The counterproposal is opposed by many in the UK and has been rejected in terms by the EU. There has not really been much movement on those issues since July and neither side seems to show any sign of blinking.

Over the last few weeks I have been writing about the consequences of Brexit on any basis for:

• patents
• geographical indications
• data protection
• EU trade marks and Community designs
• copyrights and related rights
• plant varieties, and
• civil litigation.

The government also updated its advice on IP in IP and Brexit; The Facts on 26 Oct 2018.

The measure of legal protection for brands, designs, technology and creativity is a factor to be taken into account by manufacturers and distributors when making investment and location decisions.  A picture is now beginning to emerge as to what that protection will be.  Most would regard a regime consisting entirely of national IP rights as inferior to the current mix of national and EU rights but some may regard it as enough.  Every business must make its own assessment.

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

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.