On June 23, 2016 the United Kingdom (UK) and Gibraltar will vote in a referendum to remain in or leave the European Union (EU).
If the UK votes to leave, according to Article 50 of the European Union Treaty, the United Kingdom will leave the EU two years after formal notice to leave is given unless this term is extended by unanimous agreement of all EU members, as happened in the only previous withdrawal from the EU by Greenland.
The British Prime Minister, David Cameron, has previously stated that if the result of the referendum was to leave, notice to the EU would be given promptly. Whether he does so, and indeed whether he continues to be prime minister, remains to be seen.
In general, EU legislation has effect in member states through one of two mechanisms:
- a regulation that is directly applicable throughout the EU or;
- a directive that sets out the objectives and main features of what has been adopted, but leaves implementation to the legislatures of the member states.
EU law is effective in the United Kingdom through the European Communities Act of 1972. This provides that all UK legislation has effect “subject to” directly applicable EU law as set out in an EU regulation or decisions of the Court of Justice and that EU Directives are to be transposed into UK law by laying regulations before Parliament, which will in general take effect automatically unless disapproved of by Parliament. Repeal of the European Communities Act would therefore terminate the effect of EU regulations in the United Kingdom, but not necessarily the effect of EU directives, although there could be issues as to the continued validity of regulations made under an Act which has been repealed unless the repeal itself includes provisions to maintain their validity.
How does all this affect IP rights?
The European Patent Convention is NOT a creation of the European Union. Indeed the creation of the European patent office was a result of pressure by industry to reduce the costs of securing patent protection across Europe when an EU (the European Common Market) solution to this problem seemed insurmountable after France had twice vetoed applications by the United Kingdom to join the Common Market and industry sought to achieve its objectives without being subject to the political whims of one country.
Consequently, the Brexit vote will not affect the right to designate the United Kingdom in a patent application file in the EPO. The EU has, however, adopted a number of patent-related provisions including regulations on compulsory licensing and supplementary protection certificates and a directive on the protection of biotechnological inventions implemented in the United Kingdom by regulations made under the authority of the European Communities Act of 1972. Withdrawal from the EU will result in repeal of that act, but it seems likely that legislation effecting such repeal will maintain the validity of regulations that have been made under it for at least a while. However, the requirement to maintain conformity with the European Union will cease.
The vote also has implications for implementation of the EU Unitary Patent Regulation and the Unified Patent Court Agreement. Under the terms of the regulation establishing the unitary patent, this will come into force on the date on which the Unified Court Agreement comes into effect. Under Article 89 of the Unified Court Agreement, the Agreement comes into effect when ratified by thirteen countries including “the three Member States in which the highest number of European patents had effect in the year preceding the year in which the signature of the Agreement takes place.” At the time of signature, the three countries with the highest number of European patents had effect were Germany, France and the United Kingdom. The United Kingdom has not yet ratified and it may now be politically difficult, although not impossible, for it to ratify before actual departure. If it does not, it would seem that an amendment to change the language of Article 89 would be necessary or implementation would be delayed until after the UK has actually left the EU. Furthermore Article 7 specifically provides that a section of the central division shall be in London. This again is likely to need amendment. It seems therefore that a vote in favor of departure from the EU is likely to delay entry into force of the Regulation on the unitary patent and the Agreement on the Unified Patent Court for a while.
The European Union has adopted both a regulation creating EU-wide rights, registerable at the European Union Intellectual Property Office in Alicante and a directive setting out norms for design protection in national law. If the withdrawal of the United Kingdom (UK) becomes effective, it would no longer be possible to register designs in Alicante that will encompass the United Kingdom, unless the withdrawal negotiations reach an agreement for cooperation in this field. Whether registrations secured in Alicante would require re-registration in the United Kingdom or just some form of renewal in the United Kingdom would similarly be a matter of negotiation. Similar issues could arise with respect to the EU unregistered design right. The EU directive on harmonization of design law was implemented in the United Kingdom by amendments to the Registered Designs Act of 1949 and regulations laid before parliament. The effect of UK national design registrations is therefore unlikely to be affected by a decision to leave the EU, but divergence between EU and UK law could occur. The EU directive (unlike the regulation) did not address the question of unregistered design rights and so the UK’s 15 year unregistered right will not be affected by withdrawal from the EU. New post-Brexit applications for design protection where it is desired to cover the United Kingdom should therefore be registered in the United Kingdom as well as in EUIPO and it may become prudent to make a UK national filing for any application already filed in EUIPO which was published less than one year ago and so still meets the novelty requirements of the UK legislation.
The European Union has adopted both a regulation creating EU-wide rights, registerable at the European Union Intellectual Property Office in Alicante and a directive setting out norms for trademark protection in national law. If the withdrawal of the United Kingdom becomes effective, it will no longer be possible to register trademarks in Alicante that will encompass the United Kingdom, unless the withdrawal negotiations reach an agreement for cooperation in this field. Whether registrations secured in Alicante would require re-registration in the United Kingdom or just some form of renewal in the United Kingdom would similarly be a matter of negotiation. There may also be a question of whether it would still be possible to enter a seniority claim upon registration of a mark in the European Union based on an earlier pre-Brexit UK registration. The EU directive was implemented in the United Kingdom by the Trademarks Act of 1994, an act of the British parliament and so would survive a withdrawal from the EU unless it was itself amended by a subsequent act of parliament. New post-Brexit applications for trademark protection where it is desired to cover the United Kingdom should therefore be registered in the United Kingdom as well as in EUIPO.
There are no EU directives relating to copyright, but there are a number of directives including:
- directives on what is protectable by copyright and possible exceptions (the copyright directive);
- the duration of copyright protection (normally 70 years from the death of the author);
- the computer programs directive (aiming to harmonize copyright law relating to software);
- the resale right directive;
- the database directive.
Most of these have been implemented in the United Kingdom by regulations made under the European Communities Act. As noted above, withdrawal from the EU would result in repeal of that act, but it seems likely that legislation effecting such repeal will maintain the validity of regulations that have been made under it for at least a while. However, the requirement to maintain conformity with the European Union would cease.