Brexit Briefing February 2021

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Jane Lambert

This video from the Intellectual Property Office neatly summarizes many of the changes to the law that I discussed in my articles How Brexit has changed IP Law  17 Jan 2021 NIPC Brexit and What happens to European Union IP Rights after Brexit? 21 Feb 2021 IP Yorkshire and my presentations IP After Brexit on 20 Feb 2021 and How Brexit has changed IP Law 26 Jan 2021 (slides) (handout). The rights of British and other EU trade mark and Community design and plant variety owners in the 27 remaining EU member states will be unchanged. They can be enforced, assigned, licensed or charged in the usual way.

Although the logic of brexit is to refocus British trade and investment from Europe to the wider world, the EU remains the UK's closest, largest and richest market. British companies will continue to trade and invest there for the foreseeable future.  One immediate consequence of the expiry of the implementation period is that the courts of the UK have ceased to be EU trade mark and Community design courts.  If a Britsh business wishes to enforce or defend its EU trade mark or design registration it must seek redress in the courts of one of the remaining member states.  

Until 31 Dec 2020 English lawyers had full rights of audience before the Court of Justice of the European Union and the General Court and extensive rights of representation in the individual member states as the latest issue of Brussel News (the newsletter of the Bar Council's representative in Brussels) notes.  Those rights have now been lost and although the draft Trade and Cooperation Agreement makes some provision for cross-border practice which is certainly than nothing they are more limited.  Much the same is true of patent and trade mark attorneys who must now appoint agents to prosecute trade mark and design applications in the EU Intellectual Property Ofice.  In this regard, my chambers may be able to help because my colleagues, James Bridgeman SC and Guido Carducci live and continue to practise in EU member states and retain rights of audience in the EU and their national courts as I remarked in Does Your IP Strategy Still Work 26 Feb 2021 NIPC News.

Meanwhile, the brexit experiment of refocusing British trade and investment continues with new agreements with Ghana, Albania and Mexico, a "space bridge" with Australia and further negotiations with India and New Zealand. There have been reports of delays and obstacles in exporting all sorts of goods from unprocessed seafood to cheese.   London has been overtaken by Amsterdam in the value of share trading and a decline has been reported in the volume of SWAPs and derivative transactions.  Negotiations on equivalence in financial services are understood to have progressed slowly. Lord Hill recommended the liberalization of listing conditions in his UK Listing Review to make London more competitive.  A similar recommendation was made by Roy Kalifa in his Review of UK Fintech.  The thinking behind both reports is that the EU is now a competitor in the supply of financial services. No favours can be expected from it. The remedy is to develop new products and services and find new markets.

Anyone wishing to discuss this article or brexit generally may contact me by phone on 020 7404 5252 during office hours or through my contact form at other times.

Brexit Briefing January 2021

HMS Endeavour

Artist Samuel Atkins  (1760-1910) National Library of Australia Source Wikipedia 

 

Jane Lambert

One of the arguments for brexit is that the world's fastest-growing markets lie outside Europe and membership of the European Union has hampered the United Kingdom's opportunities to supply them. The proponents of that argument counter the contention that the bargaining power of 28 nations is considerably greater than that of one with the assertion that the need of EU negotiators to take account of the interests of all member states and not just those of one means that British interests are compromised before negotiations with third countries even start.  Such compromise, they say, more than offsets the advantage of being part of a large bloc.

That thinking was apparent in Liz Truss's announcement that HMG had applied to join the Comprehensive and Progressive Trans-Pacific Partnership on 30 Jan 2021:

“Joining CPTPP will create enormous opportunities for UK businesses that simply weren’t there as part of the EU and deepen our ties with some of the fastest-growing markets in the world.

“It will mean lower tariffs for car manufacturers and whisky producers, and better access for our brilliant services providers, delivering quality jobs and greater prosperity for people here at home."

This may possibly be true of financial and other services and some high-value luxury goods like whisky but it is hard to see the attraction of the CPTPP for car manufacturers most of which are foreign-owned who invested in the UK purely for access to the EU car market.

The price of this freedom to apply for membership of trading blocs on the other side of the world and the other measures that the government may have in store quickly became apparent when customs officers impounded the sandwiches of British lorry drivers, inshore fisheries encountered difficulties in supplying continental customers and supermarket chains delays and obstacles in stocking branches in Northern Ireland. A dispute between the European Commission and AstraZeneca Plc over the performance of a contract to supply vaccine prompted the Commission unilaterally to take measures to restrict transit of vaccines across the border between the Irish Republic and Northern Ireland under art 16 of the Protocol on Ireland/Northern Ireland to the withdrawal agreement. 

Such disruption was a foreseeable - possibly even deliberate - consequence of decoupling the British economy from the European single market in order to open it up to the world. It is the start of an economic and social experiment pf which many of those who voted for brexit on order to limit immigration are unaware and would not otherwise have approved.  It is a gamble and it may take many years before it can be known whether it has paid off.

The focus of this blog is, of course, intellectual property and not polemics.  As I noted in the January Brexit Briefing  EU legislation including regulations establishing the EU trade mark, Community designs, Community plant varieties and other intellectual property rights ceased to apply to the UK from 23:00 on 31 Dec 2020. They have been replaced by a thicket of secondary legislation which I did my best to untangle in How Brexit has changed IP Law on 17 Dec 2021 and in my presentations on the subject on 26 Jan 2021 (see my slides and handout.

The CPTPP agreement contains provisions on intellectual property as I noted in British Intellectual Asset Owners' Rights after Brexit: IP Provisions of Bilateral Investment Treaties and Free Trade Agreements on 17 Aug 2020,  So, too, do the bilateral agreements that have been agreed with countries like Japan which I discussed in An Introduction to and Overview of the Comprehensive Economic Partnership Agreement with Japan on 28 Oct 2020.  Progress on negotiations with Australia, the CPTPP, Japan, New Zealand and the USA is being monitored in the "Trade Negotiations" pages of this blog.

Anyone wishing to discuss this article or any topic in it may call me on +44 (0)20 7404 5252 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.

Brexit Briefing December 2020

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Jane Lambert

Much to the surprise of many commentators, the UK concluded a Trade and Cooperation Agreement with the European Union on Christmas eve to govern the parties' future relationship from 31 Dec 2020. I discussed it in outline in The Draft EU-UK Trade and Cooperation Agreement: What We Know So Far on 26 Dec 2020. It was a great deal better than nothing but it would not have satisfied anybody who might have been hoping for a licence to undercut manufacturers and farmers on the Continent by abandoning EU product safety, environmental and employment safeguards. Her Majesty's government is, of course, free to do any of those things but if it does it will face tariffs or other countermeasures from the EU.  A lot of people in the UK from fishermen to financial services providers have expressed dismay at the deal.

The agreement required primary legislation for implementation and the 40 clause European Union (Future Relationship) Bill with its 6 schedules amounting to 80 pages cleared all its parliamentary stages in a single day.  The other important piece of primary legislation was the United Kingdom Internal Market Act 2020.  The provisions to which the EU and parliamentarians of all parties objected which I mentioned in The United Kingdom Internal Market Bill 19 Sept 2020 were dropped.

So now the legislative framework is in place in international and national law.  The terms of the UK's withdrawal from the European Union are set out in the Withdrawal Agreement (Agreement on the withdrawal of theUnited Kingdom of Great Britain and Nothern Ireland from the European Union and the European AtomicEnergy Community).   The provisions relating to the transition or implementation period lapsed at 23:00 on 31 Dec 2020 but the others remain in force.

These include the continued legal protection of intellectual assets that were protected by EU law such as registered Community designs and EU trade mark by UK intellectual property rights.  The Withdrawal Agreement was ratified and implemented by the European Union (Withdrawal Agreement) Act 2020 though the legislation amending the Registered Designs Act 1949, the Patents Act 1977, Thw. Copyright, Designs and Patents Act 1988 and the Trade Marks Act 1994 had already been made in anticipation of the withdrawal of the UK from the EU without agreement. The Trade and Cooperation Agreement contained a number of provisions relating to intellectual property which I discussed in The IP Provisions of the EU-UK Trade and Cooperation Agreement on 30 Dec 2020 but these will not require legislation in the immediate future.

New provisions for the resolution of disputes between the UK and the EU over the interpretation and application of the Withdrawal Agreement came into force at 23:00 on 31 Dec 2020 which I discussed in Dispute Resolution under the Withdrawal Agreement  31 Dec 2020.  Some matters will be reserved to the Court of Justice of the European Union notwithstanding the UK's departure from the EU but most will be resolved through consultation and cooperations with arbitration as a last resort.

Finally, the Department for International Trade has reported trade agreements with Canada, Keneffeya, Singapore, Turkey and Vietnam which appear to roll over agreements that those countries have made with the EU in December.

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

Dispute Resolution under the Withdrawal Agreement

 

Jane Lambert

Art 167 of the agreement by which the UK withdrew from the European Union which was signed in January of this year ("the Withdrawal Agreement") requires the EU and UK at all times to endeavour to agree on the interpretation and application of that agreement and to make every attempt, through cooperation and consultations, to arrive at a mutually satisfactory resolution of any matter that might affect its operation.

Art 169 (1) of the Withdrawal Agreement further requires them to "endeavour to resolve any dispute regarding the interpretation and application of the provisions of this Agreement by entering into consultations in the Joint Committee in good faith, with the aim of reaching a mutually agreed solution." The Joint Committee consists of representatives of the EU and UK under art 164 (1) of the Withdrawal Agreement and is responsible for the implementation and application of that agreement.  If no mutually agreed solution has been reached within 3 months after written notice has been provided to the Joint Committee in accordance with art 169 (1), the EU or the UK may request the establishment of an arbitration panel to resolve the dispute.

Art 171 (1) of the Withdrawal Agreement requires the Joint Committee to establish a list of 25 persons who are willing and able to serve as members of an arbitration panel before 31 Dec 2020.  Art 171 (2) provides:

"The list established pursuant to paragraph 1 shall only comprise persons whose independence is beyond doubt, who possess the qualifications required for appointment to the highest judicial office in their respective countries or who are jurisconsults of recognised competence, and who possess specialised knowledge or experience of Union law and public international law. That list shall not comprise persons who are members, officials or other servants of the Union institutions, of the government of a Member State, or of the government of the United Kingdom,"

By a decision dated 17 Dec 2020, the Joint Committee has appointed the following persons to serve as chairpersons of any arbitration panel that may be set up under these provisions: Corinna Wissels, Angelika Helene Anna Nussberger, Jan Klucka, Sir Daniel Bethlehem and Gabrielle Kaufmann-Kohler.  The EU has nominated the following ordinary members of such panel: Hubert Legal, Helena Jäderblom, Ursula Kriebaum, Jan Wouters, Christoph Walter Hermann, Javier Diez-Hochleitner, Alice Guimaraes-Purokoski, Barry Doherty, Tamara Capeta and Nico Schrijver.   The British government has nominated Sir Gerald Barling, Sir Christopher Bellamy, Zachary Douglas, Sir Patrick Elias, Dame Elizabeth Gloster, Sir Peter Gross, Toby Landau QC, Dan Sarooshi QC, Jemima Stratford QC and Sir Michael Wood.

An arbitration panel must consist of 5 members (art 171 (3)).  The EU and UK shall each nominate 2 members from among the persons on the list established under art 171 (1). The chairperson shall be selected by consensus by the members of the panel from the persons jointly nominated by the EU and UK to serve as chairperson.

The parties have agreed to be bound by any ruling of the arbitration pane pursuant to art 175 and shall take steps to comply with the ruling within a reasonable time.

Anyone wishing to discuss this article or the Withdrawal or Trade and Cooperation Agreement generally may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

The IP Provisions of the EU-UK Trade and Cooperation Agreement

Author Furdur Source Wikipedia

Jane Lambert

In The Draft EU-UK Trade and Cooperation Agreement: What We Know So Far 26 Dec 2020 I described the draft EU-UK Trade and Cooperation Agreement as follows:

"The draft trade and cooperation agreement is 1,246 pages long and consists of the body and a very large number of annexes. The body is just under 400 pages long and is divided into 7 Parts subdivided into Titles and in some cases further divided into chapters. The remaining pages are the annexes."

I added that the most important part of the draft agreement appeared to be Part Two which governs trade in goods and services. Title V of that Part covers intellectual property. 

In contrast to Title IV of Part Three of the Withdrawal Agreement (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 provides for the continued protection under national law of intellectual assets that are currently protected by EU law, Title V of Part Two of the EU-UK Trade and Cooperation Agreement will not require immediate changes to national law.  "Intellectual property" is not even mentioned in the European Union (Future Relationship) Bill which was published late last night and which will ratify the EU-UK Trade and Cooperation Agreement.

The quite extensive changes to UK intellectual property legislation which will come into force at 23:00 on 31 Dec 2020 were agreed in the Withdrawal Agreement,  Indeed, some of these changes would have come into effect even if the UK had withdrawn from the European Union without a withdrawal agreement.  I have mentioned those changes in previous articles in this publication and in NIPC Law and I shall no doubt do so again,   In the meantime, the best summary of those changes is Intellectual Property after 1 Jan 2021 which is published on the British Intellectual Property Office website.  That article was last updated on 17 Dec 2020.

Title V of Part Two of the EU-UKTrade and Cooperation Agreement consists of 57 articles between page 125 and page 147 of the draft agreement.  The articles in that title are helpfully identified by the initials "IP".They cover the following topics:

• Chapter 1 (arts IP1 to IP6) general provisions
• Chapter 2  (arts IP7 to IP37) standards concerning intellectual property rights
• Section 1 (arts IP7 to IP17) copyright and related rights
• Section 2 (arts IP18 to IP26) trade marks
• Section 3 (arts IP27 to IP31) designs
• Section 4 (arts IP32 to IP33) patents
• Section 5 (arts IP34 to IP IP36) undisclosed information
• Section 6 (art IP37) plant varieties
• Chapter 3 (arts IP38 to IP54) enforcement of intellectual property rights
• Section 1 (arts IP38 to IP39) general obligations
• Section 2 (arts IP40 to IP51) civil and administrative enforcement
• Section 3 (art IP52) civil judicial procedures and remedies of trade secrets
• Section 4 (arts IP53 and IP54) border enforcement
• Chapter 4 (arts IP55 to IP57) other provisions.

The objectives of the title which are set out in art IP1 are as follows:

"(a) facilitate the production, provision and commercialisation of innovative and creative products and services between the Parties by reducing distortions and impediments to such trade, thereby contributing to a more sustainable and inclusive economy; and 

(b) ensure an adequate and effective level of protection and enforcement of intellectual property rights."

Art IP2 (1) provides that the title "shall complement and further specify the rights and obligations of each Party under the TRIPS Agreement and other international treaties in the field of intellectual property to which they are parties." 

In general, the title is structured very similarly to TRIPS which is of course annexe to the Agreement Establishing the World Trade Organization to which the UK, the EU and all its member states are party.  That includes the key provisions of the Enforcement and Trade Secrets Directives.  It should be remembered that s.3 (1) of the European Union (Withdrawal) Act 2018 incorporates direct EU legislation into national law.

Anyone wishing to discuss this article or Title V of Part Two of the EU-UK Trade and Cooperation Agreement may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.  In the meantime, I wish all my readers a happy and prosperous New Year.

The Draft EU-UK Trade and Cooperation Agreement: What We Know So Far

Jane Lambert

The European Commission has just published the full text of the draft EU-UK Trade and Cooperation Agreement on its website.  Accompanying that draft are a draft EU-UK Security of Information Agreement, a draft EU-UK Civil Nuclear Agreement and draft EU-UK Declarations. Also worth reading are the Commission's press release of 24 Dec 2020, a Q & A on the draft agreement and a checklist entitled Big changes compared to benefits of EU membership which can be downloaded here.  On Christmas Day, the British government published a 34-page summary of the agreement and a statement from the Prime Minister.

.To understand the agreement it is necessary to refer to art 50 (2) of the Treaty of European Union:

"A Member State which decides to withdraw shall notify the European Council of its intention. In the light of the guidelines provided by the European Council, the Union shall negotiate and conclude an agreement with that State, setting out the arrangements for its withdrawal, taking account of the framework for its future relationship with the Union."

The agreement that set out the arrangements for withdrawal was, of course, the Withdrawal Agreement (Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community). It was concluded in January and implemented by the European Union (Withdrawal Agreement) Act 2020. 

Some of the provisions of the Withdrawal Agreement such as those governing the transitional or implementation period in which EU law continues to apply to the UK will lapse at 23:00 on 31 Dec 2020.  Other provisions such as those governing intellectual property or Northern Ireland will continue indefinitely.  The framework for the UK's future relationship with the EU was the Political Declaration setting out the framework for the future relationship between the European Union and theUnited Kingdom ("the Political Declaration"). The EU-UK Trade and Cooperation Agreement is intended to govern the UK's relationship with the EU from the end of the implementation period at 23:00 on 31 Dec 2020 in accordance with the Political Declaration.

The draft trade and cooperation agreement is 1,246 pages long and consists of the body and a very large number of annexes.   The body is just under 400 pages long and is divided into 7 Parts subdivided into Titles and in some cases further divided into chapters.  The remaining pages are the annexes.

The structure of the body is as follows:

• Part One: common and institutional provisions in the Agreement; 
• Part Two: trade and other economic aspects of the relationship, such as aviation, energy, road transport, and social security; 
• Part Three: cooperation on law enforcement and criminal justice; 
• Part Four:  thematic issues, notably health collaboration; 
• Part Five: participation in EU Programmes,
• Part Six: dispute settlement; 
• Part Seven: final provisions.

The most important economic provisions appear to be in Part Two. Title 1 of Part 2 covers trade in goods and Title II trade in services.  Services that are covered in this title include telecoms, financial services and legal services.  Provision is also made in Part Two for digital trade, capital m movements and intellectual property.

Because of the sheer length of the document, it will take me some time to read and digest it.  Anyone wishing to discuss this article or brexit generally may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact page.  I take this opportunity of wishing all my readers a happy New Year.

Brexit Briefing November 2020

Dover Beach

Jane Lambert

This is my last Brexit Briefing before the end of the transition period.  I delayed it much longer than I should have done to await the outcome of the negotiation between representatives of the British government and the Commission on the UK's future relationship with the European Union.  I have decided not to wait any longer for two reasons. The first is that we may not get an outcome tomorrow. Both sides are gloomy but that does not mean that talks will not continue.  The second is that an agreement may not make all that much difference to businesses and individuals in practice as there will be checks, delays and inconvenience even under a free trade agreement.

The very first Brexit Briefing grew out of a talk that I gave in chambers on IP planning for brexit on 7 Dec 2016.  There were then many uncertainties as to what would happen to Community designs and plant varieties, EU trade marks, geographical indication, the trade secrets directive, the unitary patent and the Unified Patent Court.  Because those uncertainties were likely to be resolved in the negotiations on the terms of the UK's withdrawal, I advised my audience to "Follow the withdrawal negotiations closely, particularly in so far as they affect [their] clients' industries" on slide 21.  I tried to monitor those developments in NIPC News but their speed and complexity prompted me to launch this blog.

Many of the uncertainties have been revolved.   The Trade Secrets Directive came into force during the 2 year notice period (see Transposing the Trade Secrets Directive into English Law: The Trade Secrets (Enforcement etc) Regulations 6 Jun 2019 NIPC Law).  The withdrawal agreement preserved EU intellectual property rights by converting them into national rights (see Intellectual Property Post Brexit 2 Feb 2020 and The Intellectual Property Provisions of the Draft Withdrawal Agreement 19 Nov 2019). Sadly, as I had anticipated in 2016 the UK has withdrawn from the Unified Patent Court Agreement just before Germany introduced legislation ratifying its accession (see Unified Patent Court Ratification Bill clears Lower House of the German Federal Parliament 30 Nov 2020).

A remaining uncertainty is what is to happen to cross-border litigation after the Brussels Regulation (Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters OJ L 351, 20.12.2012, p. 1–32) ceases to apply to the UK. This country has applied to accede to the Lugano Convention (Convention on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters OJ L 339, 21.12.2007, p. 3–41) but has not yet secured the consent of all members. The UK is party to the Convention of 30 June 2005 on Choice of Court Agreements which will come into effect at 23:00 on 31 Dec 2020 and regulations have been made to implement these changes. The Ministry of Justice has provided guidance on these matters in Cross-border civil and commercial legal cases: guidance for legal professionals from 1 January 2021.

As the process of dissolving the UK's 47-year legal relationship with its immediate neighbours will end at 23:00 on 31 Dec, brexit will in a sense be done.  I had thought about ending this blog at the same time but I believe that there will be many issues arising from brexit for many years to come.  There will be new initiatives like the English speaking commercial court in the Netherlands which are likely to interest businesses in the UK. The unitary patent will provide cost savings and other advantages for British companies even though the UK has withdrawn from the UPC agreement, There will be IP provisions to consider in the free trade agreements that the government hopes to negotiate. Also, it is not out of the question that the brexit experiment will be seen to fail sooner rather than later in which case it will be necessary to monitor the art 49 accession negotiations.

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

Unified Patent Court Ratification Bill clears Lower House of the German Federal Parliament

Author Cezary p  Licence CC BY-SA 2/5  Source Wikipedia Bundestag

 

Jane Lambert

In German Constitutional Court's Decision in Re Unified Patent Court Agreement  22 March 2020 NIPC Law, I commented on the Constitutional Court's decision in  Re Unified Patent Court Agreement 2 BvR 739/17 Order of 13 Feb 2020 (20 March 2020) that the bill to ratify German accession to ratify the Unified Patent Court Agreement was unconstitutional.  I wrote:

"If the problem was the lack of a two-thirds majority there is nothing to prevent the German Government from introducing another ratification bill and making sure that there are enough parliamentarians in each of the houses of Parliament to vote the measure through."

That is what appears to have happened.  A new ratification bill was passed by a quorate lower house with the necessary two-thirds majority (see UPC – Progress on German ratification 26 Nov 2020 UPC website). The bill now proceeds to the Upper House which will vote on the proposed legislation on 18 Dec 2020.

As Mr Boris Johnson MP in his capacity as Foreign Secretary had deposited the instrument of ratification on World Intellectual Property Day 2018 (see British Ratification of the UPC Agreement - Possibly the best thing to happen on World Intellectual Property Day 26 April 2018 NIPC News) we might have expected the Unified Patent Court to open for business in 2021,  Unfortunately, there are likely to be further delays as a result of the UK government's volte-face under Mr Johnson's premiership (see Volte-Face on the Unified Patent Court Agreement  29 Feb 2020 NIPC News).   A withdrawal notification of ratification was deposited with the Council Secretariat on 20 July 2020.  On the same day the Minister for Science, Research and Innovation:

"UNIFIED PATENT COURT

I am tabling this statement for the benefit of Honourable and Right Honourable Members to bring to their attention the UK’s withdrawal from the Unified Patent Court system.

Today, by means of a Note Verbale, the United Kingdom of Great Britain and Northern Ireland has withdrawn its ratification of the Agreement on a Unified Patent Court and the Protocol on Privileges and Immunities of the Unified Patent Court (dated 23 April 2018) in respect of the United Kingdom of Great Britain and Northern Ireland and the Isle of Man, and its consent to be bound by the Protocol to the Agreement on a Unified Patent Court on provisional application (dated on 6 July 2017) (collectively “the Agreements”).

In view of the United Kingdom’s withdrawal from the European Union, the United Kingdom no longer wishes to be a party to the Unified Patent Court system. Participating in a court that applies EU law and is bound by the CJEU would be inconsistent with the Government’s aims of becoming an independent self-governing nation.

The Agreements have not yet entered into force. However, in order to ensure clarity regarding the United Kingdom’s status in respect of the Agreements and to facilitate their orderly entry into force for other States without the participation of the United Kingdom, the United Kingdom has chosen to withdraw its ratification of the Agreements at this time. The United Kingdom considers that its withdrawals shall take effect immediately and that it will be for the remaining participating states to decide the future of the Unified Patent Court system".

Although this is the end of the road for British participation in the project unless and until the United Kingdom (or successor states of the UK) rejoin the European Union it need not be the end of the project.  

The UPC's Preparatory Committee meeting held on 10 Sep 2020 reported calls from European industry for the speedy implementation of the Agreement.  That includes British businesses that intend to continue to trade in the EU after the end of the transition period whether through subsidiaries, joint ventures or otherwise.  Until this year, British governments have always believed the establishment of an EEC, EU or unified patent to be in our national interests and much of British industry still does.  It is, therefore, gratifying to note that "good progress was made and the Committee is confident that pragmatic and legally sound solutions will be found that will enable the unitary patent system to be functional in a near future" (see Report of the Preparatory Committee meeting held on 10 September 2020 UPC website).

For that reason, I shall continue to monitor progress on the UPC even after the end of the transition period.   I shall also be glad to advise on points of law relating to European patents or the Unified Patent Agreement. As our chambers already have an Irish silk whose practice includes IP and technology law we can already provide representation in the UPC whenever it comes into being.   As soon as the UPC announces opens its doors, I shall also seek call to the Irish bar.   Anyone wishing to discuss this article or the UPC and unitary patent generally may call me on +44 (0)2- 7404 5252 during office hours or send me a message through my contact form.

The Reqional Comprehensive Economic Partnership Agreement

Author Tiger7253  Licence CC BY-SA 4.0 Source Wikipedia

 

Jane Lambert

In the week in which Michel Barnier and David Frost have held final negotiations, the governments of Australia, Brunei Darussalam, Cambodia, China, Indonesia, Japan, Laos, Malaysia, Myanmar, New Zealand, the Philippines, Singapore, South Korea, Thailand and Vietnam signed an Agreement for a Regional Comprehensive Economic Partnership on the 15 Nov 2020. The combined population of the contracting parties is 2.3 billion and their combined GDP is US$26.3 trillion. Larger than the United States-Mexico-Canada, the European Union and Trans-Pacific Partnership. 

The instrument is massive consisting of a Preamble, 20 Chapters and over 18 Annexes. Annex I contains Schedules of  Tariff Commitments for each country, Annex II Schedules of Specific Commitments for Services, Annex III Schedules of Reservations and Non-Conforming Measures for Services and Investment and Annex IV Schedules of Specific Commitments on Temporary Movement of Natural Persons.

The Chapters cover the following:

• Initial Provisions and General Definitions 
• Trade in Goods 
• Rules of Origin incorporating Annex 3A. Product Specific Rules and Annex 3B. Minimum Information Requirements 
• Customs Procedures and Trade Facilitation incorporating Annex 4A. Period of Time to Implement the Commitments 
• Sanitary and Phytosanitary Measures 
• Standards, Technical Regulations, and Conformity Assessment Procedures 
• Trade Remedies incorporating Annex 7A: Practices Relating to Anti-Dumping and Countervailing Duty Proceedings
• Trade in Services incorporating Annex 8A: Financial Services, Annex 8B: Telecommunication Services and Annex 8C: Professional Services 
• Temporary Movement of Natural Persons 
• Investment incorporating Annex 10A: Customary International Law and Annex 10B: Expropriation 
• Intellectual Property incorporating Annex 11A: Party-Specific Transition Periods and Annex 11B: List of Technical Assistance Requests
• Electronic Commerce 
• Competition [PDF 75 KB] incorporating Annex 13A: Application of Article 13.3 (Appropriate Measures against Anti-Competitive Activities) and Article 13.4 (Cooperation) to Brunei Darussalam, Annex 13B: Application of Article 13.3 (Appropriate Measures against Anti-Competitive Activities) and Article 13.4 (Cooperation) to Cambodia, Annex 13C: Application of Article 13.3 (Appropriate Measures against Anti-Competitive Activities) and Article 13.4 (Cooperation) to Lao PDR and Annex 13D: Application of Article 13.3 (Appropriate Measures against Anti-Competitive Activities) and Article 13.4 (Cooperation) to Myanmar 
• Small and Medium Enterprises 
• Economic and Technical Cooperation 
• Government Procurement incorporating Annex 16A: Paper or Electronic Means Utilised by Parties for the Publication of Transparency Information 
• General Provisions and Exceptions 
• Institutional Provisions incorporating Annex 18A: Functions of the Subsidiary Bodies of the RCEP Joint Committee 
• Dispute Settlement. and
• Final Provisions.

I shall explore some of these chapters in future articles.  

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

Brexit Briefing October 2020

 

Source Wikipedia

Jane Lambert

Significant deadlines have come and gone in October almost without being noticed.  One was 15 which was supposed to be the last opportunity for the text of a treaty on the new relationship with the EU to have been ratified by the Council and the European and British parliaments, The other was 31 when a reply to the letter of formal notice on the UK's alleged breach of the EU withdrawal agreement mentioned in the press release of 1 Oct 2020 should have been received.

The reason why those deadlines have been largely overlooked is that the election in the USA is more likely to affect the UK's relationship with the EU27 in the long term than anything that Monsieur Barnier or Lord Frost or even their political masters or mistresses are likely to say or do. That is because Mr Biden and Mr Trump have very different views of the world and, accordingly, of the US's relationship with the UK.

Mr Biden was the Vice-President of an administration that negotiated the Trans-Pacific Partnership which was signed on 4 Feb 2016.  Mr Trump withdrew from that accord very shortly after he became President of the USA.  Similatrly, Mr Biden was part of an administration that negotiated with the EU to establish a Transatlantic Trade and Investment Partnership. Though there had been objections to that agreement in several member states including the UK, it was the Trump administration that pulled out of those talks. Mr Trump has shown no time for trade blocs.  He prefers bilateral deals where the USA can more or less dictate terms because of its overwhelming bargaining power.

If, which now seems unlikely, Mr Trump has won the 2020 election the UK will probably get a bilateral trade deal with the USA.  That might not make much difference to the UK's economy but it may be perceived by some as strengthening the hand of the British negotiators in their dealings with the EU. If Mr Biden has won the UK may find itself at the back of the queue for a bilateral trade deal as President Obama warned in the brexit referendum campaign. That would not be because of any antipathy towards the UK but because it has a smaller market than the EU27, the TPP  or indeed China and Japan.   When the UK was a member state of the EU it was useful to a multilateralist administration because the UK exercised some leverage as one of the big three member states.  By leaving the EU it has abandoned that leverage and hence much of its usefulness to a Biden administration.  Should Biden reopen trade talks with the EU for a Transatlantic Trade and Investment Partnership mark 2, the only way the UK could access the US market on preferential terms would be by joining those negotiations which would be tantamount to rejoining the EU.

The only other noteworthy event in October was the signing in Tokyo of the Comprehensive Economic Partnership Agreement with Japan.  In An Introduction to and Overview of the Comprehensive Economic Partnership Agreement with Japan 28 Oct 2020 I compared its structure to the EU-Japan Economic Partnership Agreement and found very little difference.

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.