This morning, Friday 24 June 2016, the British referendum result in favour of BREXIT was announced, meaning the United Kingdom has voted to leave of the European Union. What will be the initial consequences in the intellectual property field?
Firstly, it must be noted that the exit of United Kingdom from the European Union will not be immediate.
The exit of the United Kingdom ought to proceed in the context of Article 50 of the Treaty on European Union. Article 50 explicitly provides that "Any Member State may decide to withdraw from the Union in accordance with its own constitutional requirements." and that "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 same Article 50 of the Treaty on European Union stipulates that “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.”. In practical terms, the exit of the United Kingdom will not take place for many months, and will probably take at least two years.
Secondly and importantly, it should be noted that national titles, both trademarks & designs and patents, governed by national laws, will not be impacted by BREXIT, whether for the acquisition or enforcement of rights.
However, the impact of BREXIT in the future will be significantly different for patent matters than matters in the trademarks & designs and data protection and fields.
For patents, rights arising from European Patent applications and European Patents examined and issued by the European Patent Office, will not be directly affected as the European Patent Office is an organisation independent of the European Union. Many states outside of the European Union, such as Switzerland, are already members of the European Patent Organisation. The United Kingdom should retain its place and role within this organisation after BREXIT. European Patents designating the United Kingdom will therefore still be issued by the European Patent Office.
However, the implementation and entry into force of the Unitary Patent and the Unified patent Court, announced in early 2017, is expected to be delayed. Delayed, but a priori not cancelled, with all observers concluding that this system, expected for over 30 years, should nevertheless arrive following a few renegotiations. For example, giving Italy - fourth placed for European Patents applications, the place currently allotted to the United Kingdom.
For European trademarks, as well as European designs, the future looks very different. For upcoming rights, territorial coverage would not extend to the United Kingdom. For rights currently filed and/or registered, the situation is uncertain. In principle, these titles could no longer cover the United Kingdom since the territory will no longer be part of the European Union. Yet again, the majority of observers agree that, in the framework of the European Union exit negotiations, agreements should be found to preserve the pre-existing rights of European trademarks and designs filed before BREXIT, for example, by way of a possible transformation of these EU rights into national British rights.
One should not forget the impact of the exit of a State from the European Union in terms of exhaustion of rights (in the past and currently, a product lawfully placed on the market in United Kingdom can circulate freely in the whole of the European Union; in the future, specifically after BREXIT, such an exhaustion of rights would no longer be automatic based on initial marketing within the United Kingdom or as part of market expansion to the United Kingdom) as well as in terms of the application of contracts with an international scope (a review of the clauses contained in all contracts effective in the United Kingdom seems imperative).
Particular attention must be given to all areas where the European Union has implemented specific provisions applicable to intellectual or industrial property, for example the pharmaceutical industry, in terms for market authorisation (for the marketing of a medicine or a phytosanitary product) and procuring national SPC’s (Supplementary Protection Certificates) via Community regulations on medication, phytosanitary products and Paediatric medicines, among others.
The copyright field, mainly governed by national British laws or international treaties, should not be directly affected by BREXIT.
However, ongoing developments in data protection, with the adoption of EU Regulation 2016/679 of 27 April 2016 relating to the protection of data should not be applied in the United Kingdom on completion of the UK’s exit procedure from the European Union. This would involve the signing of specific agreements in organise the circulation of data between the United Kingdom and other European Union countries. Similarly, note that the database protection regime of the 96/9/EC of 11 March 1996 can no longer guarantee the future harmonisation of the dispositions applicable in the United Kingdom with those of the European Union.
REGIMBEAU’s teams of are at your disposal to analyse your industrial property rights portfolios with a view to optimising them for the future.
Initial conclusions of 24 June 2016 are that, for patents no drastic changes in protection routes seem necessary, at least in the short term. However, in the trademarks and designs field, the National Protection route should be carefully studied and most likely favoured in the future.