Summary of IP provisions of EU Withdrawal Agreement

20.11.2018

The draft EU Withdrawal Agreement was published on 14 November 2018. As expected, a transition period lasting until at least 31 December 2020 will extend the application of EU regulations to the UK. With regard to IP issues, provision is made for the continuation of rights and transitional arrangements as set out below.

SPCs
  • Applications – SPC applications made in the UK before the end of the transition period will continue to be subject to the terms of the then current EU regulations. Any certificate granted will afford the same level of protection as if the UK remained a member of the EU.
Trade Marks
  • Existing rights – At the end of the transition period, 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 (at no cost to the holder).
  • Pending applications – Any applicant with a pending application for an EUTM at the end of the transition period will have nine months from the end of the transition period to file a national application for UK protection. Such applicants will be able to claim the priority date of the original EUTM application.
  • Ongoing disputes – In the UK and in member states in situations involving the UK, the jurisdiction provisions of the relevant EU regulations will continue to apply to legal proceedings which were started before the end of the transition period. Any representative who was representing a party before the end of the transition period can continue to represent that party at all stages of proceedings before the Court of Justice, the General Court and the EU IPO. If an EUTM is declared invalid/revoked in proceedings that were ongoing at the end of the transition period, then such equivalent rights will also be declared invalid/revoked in the UK (except where such ground does not apply in the UK).
Designs

Registered Community designs:

  • Existing rights – At the end of the transition period, any existing RCDs will continue to have effect in the EU and will also automatically convert into new UK equivalent rights with immediate effect (at no cost to the holder).
  • Pending applications – Any applicant with a pending application for a RCD at the end of the transition period will have nine months from the end of the transition period to file a national application for UK protection. Such applicants will be able to claim the priority date of the original RCD.
  • Ongoing disputes – In the UK and in member states in situations involving the UK, the jurisdiction provisions of the relevant EU regulations will continue to apply to legal proceedings which were started before the end of the transition period. Any representative who was representing a party before the end of the transition period can continue to represent that party at all stages of proceedings before the Court of Justice, the General Court and the EU IPO. If a RCD is declared invalid/revoked in proceedings that were ongoing at the end of the transition period, then such equivalent rights will also be declared invalid/revoked in the UK (except where such ground doesn’t apply in the UK).

Unregistered Community designs:

  • Existing rights – At the end of the transition period, any existing UCDs will continue to have effect in the EU and will also automatically convert into new UK equivalent rights with immediate effect.
  • Ongoing disputes – In the UK and in member states in situations involving the UK, the jurisdiction provisions of the relevant EU regulations will continue to apply to legal proceedings which were started before the end of the transition period. Any representative who was representing a party before the end of the transition period can continue to represent that party at all stages of proceedings before the Court of Justice, the General Court and the EU IPO.
Database rights
  • Existing rights – Any database rights in relation to databases in respect of the UK subsisting prior to the end of the transition period will remain in force in the UK for the duration of those rights, so that both EU and UK nationals will not lose their UK rights.
    Exhaustion
  • Exhausted rights – IP rights which were exhausted both in the EU and the UK before the end of the transition period shall remain so.
    Northern Ireland
  • Special status – If, at the end of the transition period, no agreement has been reached to replace the Protocol concerning Northern Ireland, differences will exist between the province and the remainder of the UK because many EU regulations will continue to apply to Northern Ireland. A limited amount of IP law is included in this, mainly covering MAs, medical devices, geographical indications and customs enforcement. This means that if this Protocol remains in place in the longer term (i.e., post-expiration of the transition period), MAs granted by the EMA will continue to apply to Northern Ireland, whilst the UK will have its own separate national regime (unless the UK is permitted to continue as a part of the EMA).

Please note that this is a summary of the draft EU withdrawal agreement at the time of writing. Therefore, the position could still change and we recommend that you contact us before taking any steps so that we can discuss the implications.

Simon Clark

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Alan Johnson

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Emma Muncey

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