Tag:  “Brexit”  | (4) posts

New UK intellectual property minister reaffirms UK commitment to the Unified Patent Court

There is a new sheriff in town. Jo Jonson takes over from Baroness Neville Rolfe as UK Intellectual Property minister. He was appointed new minister on 11 January.

Baroness Neville Rolfe has previously made some promising statements concerning the UK’s intentions to ratify the agreement on a unified patent court (UPC).

Jo Johnson has now reaffirmed the country’s commitment to the unitary patent project and its importance to British business in a House of Commons Science and Technology Committee session on 11 January. He did also warn that the future of the ratification beyond Brexit is dependent on future negotiations.

Jo Johnson stated: “We have taken a decision to proceed with preparations to ratify the UPC Agreement. We believe it is important that we participate in this framework. It has value to UK inventors and businesses and we want to be there at its creation.”

The UK should be able to participate in the unitary patent system because the UPC will not be an institution of the EU. But this only goes so far since the unified patent agreement repeatedly refers to EU law and the EU court of justice.

If and how the UK can stay in the UPC after Brexit is still an ongoing debate and we will just have to wait and see where it goes.

UK inches towards UPC ratification

There was a sigh of relief at the end of November when the UK announced that it would proceed with the ratification process to implement the UPC in spite of Brexit.  This renewed the hope that the UPC will come in to force in 2017 as planned.  Whilst this was good news, what did it actually mean for the timescales and where is the UK currently in its legislative process to ratify the UPC?

In order to look forwards, it may be helpful to take a look back to see what the UK has already done to ratify the UPC.  They were, in fact, fairly advanced in the ratification process before the result of the EU referendum put a spanner in the works.

In May 2014, the UK Parliament passed the Intellectual Property Act 2014.  This Act amended the Patents Act 1977 by inserting new sections 88A and 88B in order to introduce the concept of the UPC into the legislation.  These new sections provided that the Secretary of State may make orders to give effect to the UPC Agreement and that such orders must be presented to both Houses of Parliament (the House of Commons and the House of Lords) for approval before they are passed. The UPC was also designated as an “International Organisation” under UK law which allows it to be granted certain privileges, immunities and exemptions if required.

Following on from this Act, the Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 was laid before Parliament in March 2016.  This order makes various amendments to the Patents Act 1977 in order to clarify the difference between a unitary patent and a European patent and applies and disapplies various provisions of the Patents Act 1977 (as appropriate) to unitary patents.  It is worth noting that this order was debated in the Houses of Parliament in March when confidence was still fairly high that the UK would remain in the EU.  Hansard (the record of parliamentary debates) shows that the House of Commons approved it in just 16 minutes and the House of Lords took only 24 minutes!

Since the UK’s announcement that it will continue to ratify the UPC Agreement, it has shown some progress by signing the Protocol on the Privileges and Immunities of the Unified Patent Court on 14 December 2016.  However, in order to implement this Protocol in the UK, it will need to lay a further order before Parliament for approval.  This order is currently being drafted but no draft has been published and there is no news on when it will be laid before Parliament.  I think what we can expect, when the time comes for the parliamentary debate, is that it will definitely not be as brief as it was for the last order.  What should be a fairly straight forward procedural approval may turn into a wider discussion on the UK’s role in the UPC, how it can function once the UK leaves the EU and whether the ratification should continue.

The UK also needs to deposit its instrument of ratification of the UPC Agreement with the General Secretariat of the Council of the European Union in order to formally ratify.  This will be prepared by the Foreign and Commonwealth Office but should be merely a formal step which will be done once the relevant secondary legislation has been passed.

There is still a lot of uncertainty surrounding Brexit, particularly with the ongoing Supreme Court appeal as to whether Parliament should be consulted before Article 50 is triggered.  The judgement is due this month and may give some clarity on the timing for Article 50.  As the UK is progressing with ratification of the UPC, membership is now likely to be one of the points of negotiation on departure from the EU.

Alicia Kim, Associate

What does Brexit mean for the EUTM system?

The people of the United Kingdom have spoken: They do not wish to be part of the EU any longer. It will now take time, probably years, before we know the terms of the divorce between the UK and the EU. Having said that, what impact of Brexit do we foresee for trademark owners?

Short-term EUTM registrations are still valid in the UK. Keep in mind that the referendum has voted for Brexit, but the UK is actually yet to request for an exit, which might not happen until the autumn. This means that no short-term action is required and EUTM registrations remain valid in the UK.

Once Brexit is a fact, does it mean that the trademark protection in the UK will be lost by EUTM proprietors?

For existing EUTM registrations the answer is probably no. The expected solution is that a transitional period is set up where EUTM owners can extend/convert their EUTM registration to national UK registrations (this will likely include payment of official fees).

For new EUTM registrations the answer is that the UK will no longer be covered by EUTM and a separate application in the UK will therefore need to be filed. Today’s official fee to add the UK to an International/Madrid registration is only CFR 262 for the first class and CFR 73 for each additional class. In other words, it is not massively expensive.

From a prosecution perspective the changes will likely only be administrative and mean two applications with a little higher cost. From other perspectives we see the following three issues:

  1. Injunctions based on EUTM registrations normally cover the entire EU. Post-brexit the courts in the UK will no longer be able to issue pan-EU injunction, and vice versa court injunction in other EU member states will not cover the UK. This will increase the cost of litigation since two sets of litigation will be required.
  2. Today it is sufficient to use a EUTM registration in the UK to maintain it in the entire EU. Post-brexit EUTM proprietors, who rely on their EUTM in the UK, will need to revise their filing strategy.
  3. The case law of the Court of Justice of the EU will no longer be directly applicable in the UK, which probably will lead to differences in jurisprudence between the EU and UK. This will be important for brand owners to keep track of.

Overall our initial position is that there is no need for drastic actions with regard to the Brexit referendum. We will of course keep reverting to this subject until the dust has settled and the picture is more clear.

Kristian Martinsson, Attorney at Law 

UPC getting closer – just a ”Brexit” referendum away?

When the UK prime minister David Cameron won the 2015 general election he, due to demands from his own Conservative MP party and other parties, promised to hold a referendum on whether Great Britain was to stay or exit the EU membership. This referendum will take place on 23 June, 2016.
A current poll by YouGov® EU referendum tracker (17 May, 2016) indicate that 44% of the voters wants to stay in the EU, 40 % wants to leave and 12% are still not certain about how to vote.

The UK has for a long time been one of the three Contracting Member states that most patentees decide to validate their patents in. They are as such a very important piece of the puzzle for the Agreements on a Patent with Unitary effect and the Unified patent court to be able to enter into force. If the UK decides to stay, their preparations for ratifying the Agreements have also come a long way. For instance, the Houses of Parliament have approved draft legislation to amend the UK Patents Act to give effect to the Agreements of the UPC and the Unitary Patent. They have also made amendments to the Patent Rules, which will come into force when the UPC agreement comes into force. It is thus very likely that the current time schedule of early 2017 will stand for the entry into force of the UPC. It is not likely that the ratification will be completed before the referendum.

However, if the UK decides to leave the EU, the UPC and Unitary Patent system cannot start until the UK no longer is a member of the EU, unless the UPC Agreements is amended. The reason for this is that a non-EU member state cannot hold a position in the UPC regime. Italy will take the UK’s place as one of the three mandatory states, since it was the fourth most popular country for validation in 2012 (“in the year preceding the year in which the signature of the Agreement takes place”).

Further, the central division of the UPC, which is set out to be placed in London, will likely have to relocate. This means that the UPC Agreement will have to be amended, and possibly ratified again by the Contracting member states that have already ratified. The language regime that stipulates that the central division proceedings, for instance revocation actions, shall be in the language of the patent is not likely to change, and about 70% of the cases will still be held in English.

The Lisbon Treaty (Article 50) governs the membership of the EU and it states that “Any member state may decide to withdraw from the Union in accordance with its own constitutional requirements.” However, a withdrawal from the EU is still a complex situation and any country desiring to leave will for instance have to negotiate with each of the other 27 states about the terms of departure, a process that can last for up to two years. The European council and the parliament in Strasbourg will then have to ratify the severance terms. In reality the “exit” may take more than two years.

With all of this taken into account, it is extremely difficult to predict when the UPC and the Patent with Unitary Effect may enter into force should we face a Brexit. In worst case, a delay of several years may be expected, unless a rapid re-negotiation and re-drafting of the current Agreements for the UPC and the Unitary Patent package can take place and be ratified accordingly.

Sofia Willquist, European Patent Attorney