Access practice tools, as well as industry leading news, customizable alerts, dockets, and primary content, including a comprehensive collection of case law, dockets, and regulations. Leverage...
By Peter Leung
June 22 — The debate over whether the U.K. will leave the European Union has dominated headlines, but the effect of a “Brexit” on intellectual property (IP) law will be unclear for months—even years—following the June 23 vote.
That is because a vote to leave would be followed by a two-year negotiation period between the U.K. and EU about the terms of their future relationship. During that time, the U.K. is also likely to pass legislation to deal with transition issues.
On the IP front, that could include how to handle EU-wide rights, such as EU Trademarks and Community Designs.
In the past, when countries joined the EU, the scope of already granted EU-wide IP rights would automatically expand to cover those countries . A Brexit could possibly result in those rights contracting to exclude the U.K.
However, as Michael Edenborough, a barrister who specializes in IP law has said previously in an article for Bloomberg BNA, such a change could be viewed as an unfair deprivation of property rights without compensation (30 WIPR 32, 3/1/16).
One option might be for the U.K. to pass legislation automatically creating analogous rights to replace lost EU protections for IP. For instance, it could automatically grant a national trademark registration to those with EU trademarks that no longer cover the U.K.
Such solutions, however, would still cause headaches for brand owners with licensing agreements that refer only to EU Trademarks, leading to disagreements over handling new U.K. rights under such contracts.
Also, as Priya Nagpal an IP litigator with Olswang LLP wrote, under that scenario, companies that have EU Trademarks only used in the U.K. may find their marks attacked for non-use.
Losing those options could also increase costs, as rights holders would likely have to file lawsuits in the U.K. to enforce national rights there, in addition to EU actions.
One likely outcome of a Brexit may be a significant delay to the start of the Unified Patent Court (UPC) and European Patent with unitary effect.
The UPC and unitary patent will be a patent right and court system that will cover most of the EU. It will take effect after it has been ratified by 13 EU countries, including the “big three” of France, Germany and the U.K. A withdrawal by the U.K. might force a renegotiation of the underlying treaty.
What's more, one of the Unified Patent Court's specialist divisions is to be seated in London. There may be similar problems with U.K. judges who have already been selected for the new court.
However, Margot Frohlinger, principle director of patent law at the European Patent Office, suggested that such concerns are overstated (30 WIPR 7, 3/1/16). In a March speech, she dismissed concerns over a U.K. exit, calling them the product of “wishful thinking of some of those who still prefer the Unified Patent Court not coming into operation.”
Interestingly, the existing European Patent system will likely be unaffected by a Brexit. As Edenborough explained, this is because the European Patent is governed by a separate agreement, the European Patent Convention, which has both EU and non-EU members. Presumably, the U.K. will continue as a non-EU member, even if it votes to leave.
A European Patent is a patent examined by the European Patent Office, and then validated in the member countries of the applicant's choosing, resulting in individual national rights in those countries. This is different from the planned unitary patent, which will result in a single patent right covering all the ratifying EU countries.
To contact the reporter on this story: Peter Leung in Washington at email@example.com
To contact the editor responsible for this story: Mike Wilczek in Washington at firstname.lastname@example.org
Copyright © 2016 The Bureau of National Affairs, Inc. All Rights Reserved.
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to email@example.com.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to firstname.lastname@example.org.
Put me on standing order
Notify me when new releases are available (no standing order will be created)