Latest guidance from the UK Government on implications of ‘no-deal’ Brexit for IP rights holders
On September 24, 2018, the UK’s Intellectual Property Office (IPO) published a further series of technical notices on how intellectual property (IP) rights holders might be affected if the United Kingdom (UK) leaves the European Union (EU) in March 2019 without an agreement.
The overarching message is that in the event of a ‘no-deal’ Brexit, there will be minimal disruption for rights holders. To this end, the UK Government has indicated that it will grant equivalent UK IP rights and legislate to create equivalent laws, as appropriate. More specifically:
Trademarks and registered designs:
- EU trademarks and Community registered designs will continue to be protected in the UK through the grant of equivalent UK registered rights to arise automatically.
- Applicants for EU trademarks and Community registered designs that are not yet granted at the date of exit from the EU will have nine months to re-file their applications in the UK, retaining the date of the original EU applications for priority purposes.
Unregistered design rights:
- Unregistered Community designs will continue to be protected in the UK for the remainder of the period of protection.
- A new equivalent unregistered design right will be created in the UK (“supplementary unregistered design”), so that designs that are disclosed after the UK exits the EU will be protected in the UK on equivalent terms to the protection afforded within the EU.
UK patents and supplementary protection certificates (SPCs):
- UK patent law has been minimally impacted by EU law. Insofar as it has – for example with respect to SPCs for pharmaceutical products and agrochemicals, the relevant EU patent legislation (or the implementation of it into the UK) will be retained in UK law. Therefore UK patents and SPCs will continue to have the same protection as before exit from the EU.
- The conditions for patenting biotechnological inventions set out in EU legislation will remain in place in the UK, so that protection and enforcement will continue as before.
Unitary Patent Court and Unitary Patents:
- The UK has ratified the Unified Patent Court Agreement but it has not yet been ratified by Germany. If it is not fully ratified, the UK domestic legislation to bring it into force will not come into effect and there will be no change on exit.
- If the Unified Patent Court Agreement is fully ratified, the UK Government will explore whether it is possible to remain within the unitary regime notwithstanding the UK’s exit from the EU. If the UK decides or needs to withdraw from the regime, existing unitary patents will give rise to equivalent UK patents so that inventions continue to be protected in the UK.
- The UK’s membership of international copyright treaties means that the scope of protection for copyright works in the UK and UK works abroad will remain largely unchanged. Further, EU laws on copyright and related rights will be enacted into UK law so that copyright protection is largely as before exit.
- However the body of EU law which provides for reciprocal protection between EU member states will no longer apply in the UK. This will mean, for example, that there will be no obligation on EEA states to provide the sui generis database right to UK nationals and UK owners of database rights may find that their rights are unenforceable in the EEA.
Clearly the intent of the UK Government is for rights holders to continue to hold equivalent rights and benefits in the UK as before exit, without any burden to the rights holders. Any new equivalent UK IP rights will be granted automatically and seemingly without any examination by the UK IPO. If separate protection in the UK is not wanted or required, the rights holder will need to actively opt out. If IP rights are in place in both the UK and EU, rights holders will need to monitor, use and enforce their rights in the UK and EU separately going forward.
With regards to EU trade mark and Community registered designs that are still at application stage at the point of exit, the costs of re-fling will be borne by the applicant. It is noted that some designs may be refiled in the UK outside the one year grace period from first disclosure to the public, however as the applicant can claim priority from the earlier filed Community application, this should circumvent any issues around novelty.
UK IP rights will remain unaffected. UK businesses and individuals will still be able to apply to register EU IP rights and will continue to be able to obtain unregistered Community design right protection for designs that are first disclosed within the EU. There will however be no obligation on EEA states to provide the sui generis database right to UK businesses and nationals.
One important issue identified in the IPO notices is exhaustion of IP rights.
The current position is that IP rights are exhausted once they are put on the market in the European Economic Area (EEA) with the rights holder’s consent. On exit from the EU, the UK Government has provisionally stated that it will continue to recognize the EEA regional exhaustion regime so that IP rights will be exhausted in the UK once they have first been put on to the market anywhere in the EEA with the right holder’s consent. We do not yet know if the EEA will apply the principle in reverse i.e. whether IP rights will be exhausted in the EEA once they have first been put on the market in the UK with the rights holder’s consent.
What this means is that upon exit from the EU, any IP rights in the relevant goods will not be a hindrance on importers seeking to import goods from the EEA to the UK (provided that intellectual property rights have been exhausted in the EEA) as before exit. However, where goods are sourced in the UK, importers of these into other EEA member states will need to be concerned regarding the IP position as the non-UK IP rights in the goods will not be deemed to have been exhausted, so for example, the importer may need to seek permission from the rights holder first.