Impact of Brexit on IP

Posted in Community Trade Marks, Designs, European Patents, UK Intellectual Property on by Admin

The Chartered Institute of Patent Attorneys (CIPA), the professional body representing patent attorneys in the UK, has published a guide to the potential impact of the UK’s decision to leave the European Union on intellectual property matters. While the possible effects on patents, designs and trade marks have been discussed previously, this guide expands on other IP topics including plant variety rights, trade secrets, copyright, orphan drugs, the Nagoya Protocol and transactions in both IP assets and goods.

As previously considered here, there is much uncertainty as to how the UK’s relationship with the EU will develop and how this may affect existing EU-wide intellectual property rights such as registered Community designs or EU trade marks. However, there should be virtually no effect on patents or patent applications because the European patent system is not part of EU law and there has been no suggestion the UK will leave the unrelated European Patent Convention. The ability to obtain European patents having effect in up to 38 EPC member states (including the UK) through the European Patent Office, and to enforce these rights through national Courts, as well as the opposition procedure before the European Patent Office, will remain unchanged. The main uncertainty in the field of patents relates to the proposed new European Unitary patent and Unified Patent Court, both of which are projects of the EU. It is too soon to say whether a way will be found to adapt these proposals so that they can proceed, either with or without the United Kingdom. There will also be effects on some patent-related rights which are subject to EU law, such as Supplementary Protection Certificates.

This new guidance emphasises that CIPA and the Institute of Trade Mark Attorneys (ITMA) intend to work with the UK Government to ensure that proprietors of EU trade marks and design rights will not lose protection in the UK after Brexit, and that UK attorneys will continue to be authorised to act before the EU Intellectual Property Office. Nevertheless, CIPA recommends that licences and other agreements relating to existing EU trade mark and design registration portfolios should be reviewed now to flag up any potential issues.

A further issue raised in the guide is that of ‘exhaustion of rights’. ‘Exhaustion of rights’, in this case, refers to the general principle that an EU or Member State intellectual property right may not be enforced in respect of a product which has previously been put on the market in the European Economic Area (EEA) by the rights holder or with his consent. The principle of exhaustion of rights derives from the fact that the EEA forms a single market for goods and services, and essentially restricts a rights holder from objecting to remarketing of products within the EEA if the rights holder himself (or persons authorised by him) previously put those products onto the market in the EEA. There are, however, exceptions to this general principle – for example, with regard to trade marks, the rights holder may still object if there are legitimate reasons for opposition to further commercialisation of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market.

If the UK leaves the EU without joining the EEA or the European Free Trade Agreement, or without negotiating a new bilateral agreement containing similar provisions, the doctrine of exhaustion of rights may cease to apply in the UK. This will of course depend on the outcome of the UK Government’s negotiations with the EU.

Michael Ford

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