In late December the Law Society sent a joint position paper on intellectual property and Brexit, signed by organisations representing the main UK IP professions, to the UK government containing a short list of key areas where government action is needed for IP continuity and to minimise disruption in the wake of Brexit. This position paper has now been made publicly available and in this blog we take a look at the specific action points for the government.
(According to the Law Society's press release the paper has been shared with various government departments including the Ministry of Justice, the Department for Exiting the European Union, the Department for Business, Energy and Industrial Strategy, and the UK Intellectual Property Office).
The recommendations fall under five key areas:
- Continuation of EU-derived IP rights
The position paper recommends that the government either:
- negotiates a package of rights to secure the continuation of all existing substantive and procedural pan-European rights and defences; or
- if that is not achievable, legislates for the automatic continuation in the UK of EU rights.
The second option could include the introduction of domestic UK rights, to the extent they do not already exist, which includes the Community unregistered design right and protection for geographical indications. The European Commission paper on IP rights published in September 2017 makes essentially the same proposal – this paper was discussed in our earlier blog here.
The paper states that in either case the government will need to negotiate with the EU to ensure ongoing continuing cooperation and data sharing between the relevant agencies, and emphasises that this negotiation should not be held up pending other Brexit discussions.
- Unitary Patent/Unified Patent Court Agreement
The group emphasises that the UPC is one of the most significant developments in IP dispute resolution of recent years. The court could be ready to open in 2018, subject to the UK and Germany depositing their instruments of ratification. (In this regard, the German constitutional challenge is still progressing through the German courts, but the UK has almost completed all the necessary legislative steps for ratification.)
The group urge the government to confirm that it is the UK's intention to stay in the UPC and that it will abide by the terms of the UPC Agreement following Brexit. (Reference is made to the government's announcement in November 2016 that it intended to ratify the UPCA – see our blog here.) It also requests that the UK work with UPC member states to bring the UPC into effect as soon as possible and to ensure that there are no obstacles to UK participation in the UPC and the Unitary Patent after Brexit.
It also set out the following objectives:
- Continuation of the court, dealing inter alia with life sciences and chemistry disputes, in London.
- Continued involvement of UK national judges.
- Continued and equal rights of participation of legal professionals qualified and based in the UK in all parts of the court's procedures.
- Exhaustion of rights
The position paper explains that industry needs to know what exhaustion rules will apply post-Brexit to goods first placed on the market: in the UK, in the EU, the EEA or internationally, and invites the government to consult widely and publicise its position on exhaustion. The group recommend that in the interim the government should make it clear that the current regime will continue and that the position will be reciprocated throughout the EEA.
- Rights of representation
The government is urged to treat continued rights of representation of UK IP professionals based in the UK as a priority and should ensure that they continue in all relevant EU forums.
- Mutual recognition of judgments
The government is asked to urgently negotiate arrangements with the EU that continue in force the substance of the current arrangements under the Rome and Brussels regulations, so as to provide reassurance to business on mutual recognition of judgments.
Other IP issues arising from Brexit
In view of the volume of work dealing with the above and many other important points of detail in the field of IP, the signatories to the note consider it vital to have a transitional period in which to negotiate these issues and consider that the necessary period is likely to be several years.
Most, if not all, of the recommendations in this position paper have already been made in other papers produced by the signatories and other IP organisations in recent months (as is acknowledged in the paper itself). Many of the organisations have also been in discussions with the UK Intellectual Property Office over the last year. However, the mere fact that these five organisations have collaborated together to produce this short list for the government should add further weight to their arguments and, we would hope, attract the attention of those responsible in government. To date there has been no specific response from the government to the paper.
If you wish to discuss any of these issues further, particularly in the context of lobbying, please consult your usual Fieldfisher contact or the authors of this note.
Organisations supporting the recommendations
The position paper was signed by signatories from the following organisations: The Law Society, Intellectual Property Bar Association, CIPA, CITMA and IP Federation.