Brexit “no-deal” IP update

28.09.2018

In this note, we summarise the government’s notices dated 24 September on the state of intellectual property law if the UK leaves the EU at the end of March 2019 without a deal.
Patents
Impact on patents and SPCs
• Essentially there will be no change to current patent law. The EU legislation relevant to patents and SPCs will be retained in UK law under the EU Withdrawal Act 2018. Existing systems will remain in place and operate independently from the EU.
• There will be no significant change to the legal requirements or the application process for patents and SPCs. Legal proceedings involving these rights or licences will also be unaffected. The SPC regime will operate as before.
• Holders of, and applicants for, SPCs should be aware of any changes to the related regulatory processes
Impact on the unitary patent and the Unified Patents Court
• The future of the UPC is currently dependent on ratification by Germany. If the UPC never comes into force, there will be no change in the existing system for obtaining and enforcing patents.
• If the UPC / unitary patent system comes into force following German ratification, then in the event of “no deal”, the UK will “explore” whether it would be possible to remain within the systems.
• If the UPC commences, and it is not possible for the UK to remain in the system, businesses will not be able to use unitary patents to protect inventions within the UK, or enforce UK patents in the UPC. Instead, businesses will only be able to protect their inventions in the UK using national patents and European patents designating the UK and enforce these in the UK courts. Any existing unitary patents will be converted to equivalent UK patent protection. UK businesses will, however, still be able to use unitary patents to protect their inventions within contracting EU states, and to enforce them in the UPC.
Trade Marks
• Continued protection for EU Trade Marks – At the date of exit any existing registered EUTMs will continue to have effect in the EU and will also automatically convert into new UK equivalent rights with immediate effect. The new UK rights will be treated as if they had been registered under national law.
• Pending EUTM applications – Any applicant with a pending application for an EUTM at the date of exit will have a period of 9 months from the date of exit to file a national application for UK protection. Applications for UK protection within the 9 months will be able to claim the priority date of the original EUTM application.
• Cost – Applicants with pending EUTM applications who need to file a UK application will need to pay the cost of the new application.
• Notice – Owners of existing registered EUTMs will be automatically notified of their new equivalent UK trade mark on creation. However, applicants with pending EUTM applications will not be notified of the need to file their UK application within the 9 month window from the date of exit.
• International applications designating the UK – No agreement has yet been announced with WIPO.
• Ongoing disputes – No announcement yet of what will happen to cases before the UK courts involving EU trade marks
Designs
• Continued protection for existing Registered Community Designs – Equivalent changes to those described above for EUTMs will also apply to RCDs. Therefore existing RCDs will continue to have effect in the EU and a new equivalent UK right will arise automatically on the date of exit. Rights holders will be notified if any new rights have been granted.
• Pending applications for RCDs – Applicants with pending applications will need to file a UK registered design application claiming the priority date of the RCD application within 9 months from the date of exit. Applicants will need to pay the cost of the UK application, and will not be given notice of the need to file their UK application within the 9 month window.
• New “Supplementary Unregistered Design Right” – On the date of exit the UK will introduce a new unregistered design right which mirrors the Unregistered Community Design. Any new design disclosed after the UK leaves the EU will be protected automatically by this new right which will be equivalent to UCD protection in the UK (assuming equivalent qualifying criteria are met). This new right will be separate from the existing UK unregistered design right (which has completely different subsistence and infringement criteria) which will continue to be available in addition.
• Protection for existing Unregistered Community Designs – Any existing UCDs will continue to be protected in the UK through the new supplementary right, as well as throughout the EU.
• Ongoing disputes – No announcement yet of what will happen to cases before the UK courts involving RCDs or UCDs.
Copyright
• UK copyright law largely unchanged – Since the UK is a party to various international copyright treaties, and has implemented most of the EU copyright directives into UK law, copyright law in the UK will be largely unchanged. However, there may well be implications for protection within the EU, as follows:
• UK database rights owned by UK nationals, residents and businesses may become unenforceable in the EEA.
• Loss of portability – UK nationals face restrictions on accessing online content services (e.g. Netflix) whilst travelling within the EU.
• UK-based satellite broadcasters may need to clear copyright in each member state to which they broadcast, if the country-of-origin principle is lost.
• Orphan works – UK-based Cultural Heritage Institutions that make works without documented owners available online in the EEA may infringe copyright.
• EEA Collective Management Organisations no longer have to provide (upon request) multi-territorial licensing of online rights in musical works managed by UK CMOs.
• Accessible format copies for blind, visually impaired or otherwise print disabled – During the period between leaving the EU and UK ratification of the Marrakesh Treaty, businesses, organisations or individuals transferring accessible format copies between the EU and UK may not be able to rely on EU Regulation (Regulation (EU) 2017/1563).
Exhaustion
• As a temporary measure, the status quo will be preserved in the UK. Accordingly, the UK will continue to recognise the EEA exhaustion regime. The rules affecting imports of goods into the UK will be unaffected, and parallel imports of goods can continue from the EEA. There may, however, be restrictions on the parallel import of goods from the UK to the EEA, since that will not be a matter of UK law. After the UK’s exit from the EU, businesses exporting goods from the UK to the EEA may therefore need the rights holder’s consent.
• The government is still considering longer term options for the exhaustion regime.
Please note that this is a summary of guidance notices, so things could still change. We would therefore recommend that you contact us before taking any steps so that we can discuss the implications.
This document is for information purposes only and any statements or comments it contains relating to matters of law are not intended to be acted on, or relied upon, without specific legal advice on the matters concerned. To the fullest extent permitted by law, we disclaim all liability and responsibility for any reliance on the statements or comments contained in this document.

Simon Clark

Author