To say Brexit is a conundrum is almost a euphemism, the list of issues to settle between the 27 remaining European Union members and the United Kingdom seems bottomless. Intellectual property is no exception, and the European Commission Brexit-dedicated task force has issued a position paper on IP, setting out principles for the “UK’s orderly withdrawal from the EU.”
The European Commission Task Force for the Preparation and Conduct of the Negotiations with the United Kingdom under Article 50 issued four position paper on 6 September: on intellectual property [pdf], including geographical indications [pdf], customs-related matters [pdf], public procurement [pdf], and use of data [pdf].
A few key points of the short paper include the suggestion that withdrawal will create uncertainty for UK and EU, though it appears not for patents, and that any intellectual property right granted before the UK withdrawal should be enforceable, the EU argues.
It also calls on the UK to put measures in place to ensure protection of geographical indications. And it says that after the withdrawal, supplementary protection certificates or extensions should be allowed to carry forward, and that exhaustion of IP rights should remain exhausted after Brexit.
In its press release, the EU Commission explains that the IP position paper is expected to “give certainty to right holders and those who will be in the process of acquiring rights at the time of withdrawal.”
The position papers were discussed at the Council Working Party for Article 50 on 7 September, and are expected to be discussed with the UK, according to a European Commission spokesperson, who added that he could not comment on the outcome of the 7 September discussions.
The IP rights position paper says the withdrawal of the UK from the EU “will create uncertainty” for the UK and the EU stakeholders alike in relation to the scope of protection in the UK of “certain intellectual property rights; to the treatment of applications for certain rights and to the exhaustion of rights conferred by intellectual property rights.”
The paper refers to trademarks, designs, plant variety right, protected geographical indications, and protected designation of origin. The paper does not refer to patents, as the European patent system in not an EU institution. The European Patent Organization is an intergovernmental organisation based on the European Patent Convention, and includes a larger membership than EU countries, such as Turkey and Switzerland.
The situation seems to be slightly different for the unitary patent system. According to the European Patent Office, “The long-term participation of the UK in the Unitary Patent system is legally possible. However, this is a political decision to be taken by the EU, its remaining Member States and the UK.”
The holder of any IP right having unitary character within the Union and granted before the withdrawal date should, after that date, be recognised as the holder of an enforceable IP right in the UK, the paper states.
On geographical indications, and designations of origin, and other protected terms in relation to agricultural products, the paper suggests that the UK puts in place, as of the withdrawal date, the “necessary domestic legislation providing for their continued protection,” which should be comparable to the protection provided by Union law.
The paper further says that after the withdrawal date, a person should continue to be entitled to obtain in the UK a supplementary protection certificate or an extension of a previously granted certificate where such person had submitted their application before the withdrawal date. Supplementary protection certificates, according to the EU Commission, “are an intellectual property right that serve as an extension to a patent right. They apply to specific pharmaceutical and plant protection products that have been authorised by regulatory authorities.”
On exhaustion of rights, rights conferred by IP rights which were exhausted in the EU territory before the withdrawal date should, after that date, remain exhausted both in the EU and in the UK, says the position paper.
UK Patent Attorneys Welcome Legal Certainty
Commenting on the paper, the Chartered Institute of Patent Attorneys (CIPA), a UK patent attorney group, said the position paper provides welcomed clarity and legal certainty for rights holders and CIPA members.
CIPA President Tony Rollins said that on trademarks and designs, “the Commission’s comments reflected the positions of CIPA and other interested professional organisations in the UK.” He added that CIPA agrees with the Commission on supplementary protection certificates, “which broadly reflects CIPA’s position in its paper The Impact of Brexit on IP.
“We do not believe that anything should be read into the lack of mention of the proposed Unitary Patent or Unified Patent Court as neither currently exists and the paper deals only with existing rights,” Rollins said, and added that CIPA “will continue to campaign for the UK’s membership of the Unitary Patent and Unified Patent Court system and for the continued rights of trade mark attorneys to represent clients before the EUIPO [European Union Intellectual Property Office].”
William New contributed to this report.
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