These are the slides and handout for a talk that I gave in London to some 25 specialist solicitors, patent and trade mark attorneys on 7 Dec 2016. As the PM has indicated that she will give 2 years notice of withdrawal from the EU by the end of March 2017 businesses have a very limited time to devise prosecution, licensing and enforcement strategies for the UK and the remaining member states. I have discussed 5 main topics: 1. Why discuss this topic at all until we know more about the terms of our departure; 2. Our present IP framework that consists of a mixture of statutes (some of which implement directives) and EU regulations; 3. How IP law is likely to develop in the 2 years notice period; 4. What is likely to happen to trade marks, designs, geographical indications and the unitary patent and UPC on Brexit and how it is likely to affect particular industries; and 5, Tips for IP planning

1. IP Planning for Brexit
Jane Lambert
4-5 Gray’s Inn Square
jlambert@4-5.co.uk
http://nipclaw.blogspot.com
Wednesday, 7 Dec 2016

2. IP Planning for Brexit
• Why bother to talk about the topic at all?
• The current IP framework
• Likely developments over the notice period
• Possible consequences at the end of the
notice period
• Tips for IP planning

3. Why bother to discuss the topic at all?
• HMG has indicated that it will give notice of
withdrawal by 31.03.2017
• Notice period will expire no later than
31.03.2019 unless extended by agreement
after which treaties will cease to apply
• Notice period is shorter than even
unregistered Community design right and the
length of time many IP actions are disposed of

4. Why bother to discuss the topic at all?
• UK will continue to trade with and invest in EU
and EU member states will continue to trade
with and invest in UK.
• At least some legal consequences of Brexit can
be anticipated (albeit provisionally) whether
we enter a withdrawal agreement or not and
regardless of the terms of such agreement.

5. The Current IP Framework
• Maintaining minimum levels of legal
protection for brands, designs, technology and
creative works has been a condition of access
to the world’s richest markets since 1994
• EU is party to the WTO Agreement that
guarantees such access
• EU directs member states to comply with the
WTO Agreement, TRIPs and treaties

6. The Current IP Framework
• EU also seeks to harmonize national law to
achieve treaty objectives such as free
movement of goods and services
• Businesses in UK can rely on a mixture of EU
and national laws to protect investment in
branding, design, technology and creativity
• Rights under these laws are ultimately
adjudicated by CJEU

7. The Current IP Framework
• National and EU IP rights are balanced by
other rights such as those arising under arts
101 and 102 of the TFEU
• Disputes between member states over
judgments and jurisdiction are determined by
Brussels Convention which is now enforced by
regulation
• A similar convention exists with Switzerland

8. Likely Developments in Notice Period
• The UPC agreement will be come into force
when ratified by UK and Germany
• The Trade Secrets Directive will come into
force
• Further work will be done on the
development of digital single market

9. Ratification of UPC Agreement
• On 28 Nov 2016 Lady Neville-Rolfe indicated
that HMG would ratify the UPC Agreement
• HMG has always favoured an EU wide patent:
– One of the few countries to ratify the Community
Patent Convention
– Hargreaves report recommended UK’s accession
in 2011
– HMG signed the UPC agreement in 2013

10. Ratification of UPC Agreement
• HMG has leased premises for the court
• Probably in the interests of British businesses
for the court to take off even if UK has to
withdraw from it in 2019
• Primary legislation passed and Order in
Council drafted in 2014
• Good chance Court will open in 2017 or 2018

11. Trade Secrets Directive
• Trade Secrets Directive adopted shortly before
the referendum
• Has to come into force in June 2018
• Great opportunity to codify trade secrets law
in UK which is anomalous, complex and
uncertain

12. Digital Single Market
• No specific proposals yet but likely to require
further harmonization of national copyright
law
• Creative, financial and perhaps other service
industries will benefit from digital single
market

13. Consequences of Withdrawal
• Treaties fall away and with them EU
regulations
• Some or all of the regulations may be adopted
under the “Great Repeal Bill”
• Some rights such as unregistered Community
designs, guarantees of origin for British food
and beverages and SPCs will disappear though
equivalents could be adopted

14. Consequences of Withdrawal
• Chancery Division and County Court will cease
to be EU trade mark and Community design
courts
• UK will fall outside jurisdiction of other states
EU trade mark and Community design courts
• CJEU will cease to have jurisdiction over UK
though judgments are likely to have
persuasive authority on legislation derived
from directives

15. Consequences of Withdrawal
• UK will have to withdraw from UPC and
London will cease to host the central division
• Richard Gordon QC and Tom Pascoe suggest it
might be possible to modify UPC agreement
but unlikely
• Optional protocol to EPC abandoned because
of incompatibility with EU law

16. Effect on different industries
• Agriculture
• Fashion
• Financial Services
• Information and communications technology
• Manufacturing

17. Opportunities from Brexit?
• CIPA suggests that it might be possible to
apply the Nagoya Protocol on biodiversity in a
way that does not harm academic and
commercial research in UK
• ACID has suggested a right equivalent to an
unregistered Community design right but fir a
much longer term
• Incentive to develop new markets outside EU

18. Tips for IP Planning
• IP plan should be part of a business plan
• Businesses should already be applying
following methodology
– Identifying income streams over business planning
period
– Considering threats to income streams
– Devising counter-measures
– Providing funding for counter-measures

19. Tips for IP Planning
• Disappearance of EU rights such as EU TM
likely to be taken into account when devising
counter-measures
• Follow withdrawal negotiations closely,
particularly in so far as they affect your clients’
industry
• Be astute for any opportunities that may arise
whether in UK, Europe or beyond

20. Withdrawal from EU not the end of
the world
• Korea and Israel show that it is possible for
medium size countries to thrive outside trade
blocs
• New technologies may make geographical
proximity less important
• Read http://nipclaw.blogspot.com and follow
@nipclaw for further developments

21. Any Questions
Jane Lambert
4-5 Gray’s Inn Square
London
WC1R 5AH
+44 (0)20 7404 5252
jlambert@4-5.co.uk
http://nipclaw.blogspot.com
@nipclaw
https://uk.linkedin.com/in/nipclaw