As the Brexit negotiations rumble on in Brussels and London, the intellectual property (IP) profession has outlined its vision of what Brexit should look like. In a note submitted by the Law Society to the UK government in December last year, a number of IP organisations, including the IP Federation, which represents the views of UK IP intensive industry on both the domestic and international stages, outlined five key priorities that they would like the Government to consider, in the ongoing negotiations.

The five areas highlighted are:

1. Continuation of EU-derived IP rights. 2. Unitary Patent / Unified Patent Court Agreement. 3. Exhaustion of rights. 4. Rights of representation. 5. Mutual recognition of judgments

Continuation of EU-derived IP rights

The paper highlights the importance of ensuring that the rights of current IP owners are not lost or prejudiced by Brexit. They also urge that work is done to ensure minimum disruption and cost to the IP system. In some instances, achieving this should be reasonably straightforward. For example, most of the legal architecture surrounding patents is derived from international treaties, rather than EU law and so should remain post-Brexit.

Other areas of IP however, such as trade marks, are far more bound to EU law, so ensuring a smooth transition for trade mark holders in both the UK and the EU will be more of a challenge. The paper calls on the Government to work towards negotiating; “a package of rights to secure the continuation of all existing substantive and procedural pan-European rights and defences to them”. If this is not possible, the paper argues, then the government should “legislate for the automatic continuation in the UK of EU rights”.

For further information on how Brexit might impact both patents and trade marks, please see our guidance here.

Unitary Patent / Unified Patent Court Agreement.

The majority of EU Member States have agreed to establish unitary patents (UPs) – single patents whose territorial scope will extend to all participating countries, and a Unified Patent Court (UPC), which will have exclusive jurisdiction over both UPs and, subject to a transitional “opt-out”, existing and future (non-unitary) European patents in force in the participating countries.

The paper calls on the Government to confirm its intention to stay in the UPC following Brexit and to work to bring the UPC into effect as soon as possible.

The Government has previously indicated support for the UPC and seems committed at this stage. Remaining within the system post-Brexit however raises questions, in particular around the role of the Court of Justice of the EU. These questions are in many ways political, as exemplified by Managing IP magazine, which asks, “the question is: does the UPC need the UK more than the UK needs the UPC?”

Beyond UK shores, Germany also has yet to ratify the UPC agreement and a constitutional legal challenge to German ratification could yet derail the process. The German bar association, however, has recently thrown its support behind the UPC in Germany. While we don’t yet know what the German Constitutional Court will make of this, it could be an indication of which way the wind is blowing.

For further information on the UPC click here.

Exhaustion of rights

At present, holders of intellectual property rights cannot use their IP to prevent further circulation of goods within the European Economic Area (EEA) once those goods have been put on the market in the EEA with the consent of the IP rights owner. The rights of the IP owner are said to be exhausted. If, as presently appears to be the likely outcome, the UK leaves the EEA at the same time as it leaves the EU, the UK Government will need to decide what future policy on the exhaustion of IP rights will be. It could decide that the marketing of goods anywhere in the world by the IP rights owner will exhaust the owner’s rights, or at the other extreme, it could decide that rights are only exhausted once the goods have been placed on the UK market.

The paper makes no particular recommendation to the Government on exhaustion of rights but does ask that due consideration is given and that the Government take a position.

Rights of representation

The paper urges that, despite any acrimony in the negotiations, the rights of UK based IP professionals to make representations before the CJECU and the EUIPO should not be curtailed. The EU has already stated that, in the absence of any agreement to the contrary, attorneys and other representatives ‘that are domiciled or have a seat in the UK only’ will, following the UK’s departure from the EU, lose representation rights before the European Union Intellectual Property Office.

The final position regarding rights of representation will not be known until the precise terms of the UK’s future relationship with the EU are agreed. Rights of representation may also be affected by the terms of the transitional or implementation period that are currently being negotiated. Marks & Clerk has however had a presence in the EU for nearly 30 years, in particular in France and Luxembourg, and will accordingly be able to continue to represent its clients before the EUIPO, whatever the political settlement. For many in the UK IP profession however, action is needed here quickly.

Mutual recognition of judgments

The paper calls on the Government to “urgently negotiate agreements with the EU that continue in force the substance of the current arrangements under the Rome and Brussels regulations” (regarding mutual recognition of legal judgments). The UK’s legal and IP sector is globally renowned for its fairness and consistency, and the recognition of judgments is an important aspect of that.

This will likely continue to be the case once the UK leaves the EU, but working out the mechanics of how UK judgments will be applied in the EU following Brexit, and vice versa, will require careful consideration.