As everyone knows, in June, the United Kingdom passed
the BREXIT referendum (driven by British voters), voting to exit the European
Union. What affect does BREXIT have on intellectual property rights in
the United Kingdom and the European Union? There is a two-year process of
negotiation between the UK and the EU, provided for by law, to determine the
specifics of the exit. Until that process is completed, the UK remains an
EU Member State. There will be no immediate change in intellectual property
rights, but, once the exit has been accomplished, certain intellectual property
rights will be affected.
PATENTS
European patents will not be affected by BREXIT.
The UK was and will continue to be a member of the European Patent Convention
and the Patent Cooperation Treaty. The EPC is not connected to the EU; it
is a separate treaty among European nations, and the UK is a member
nation. The PCT is also not connected to the EU; it is an international
treaty among countries worldwide, and the UK is a member state. UK and
non-UK patent applicants can continue to file their applications in the
European Patent Office and designate the UK, so that they can obtain patents in
the UK through the current EPO validation system.
However, BREXIT will
significantly impact the EU’s new Unitary Patent and Unified Patent
Court. This new system provides for a single (unitary) patent in the EU
and a separate court to enforce those patents. The Unified Patent Court
will handle only patent matters, including infringement and validity, and will
have locations throughout Europe. The court will have the authority to
issue injunctions against infringers covering all of the EU, and can revoke
patents throughout the EU.
BREXIT will delay
implementation of the new Unitary Patent and Unified Patent Court system, which
is set to go into effect in 2017. The system is the subject of an EU
initiative and agreement, which the UK and certain other countries must
ratify. It is unclear whether the UK will now ratify the agreement.
If the UK does not, the other EU members will have to amend the agreement or
start over and draft a new agreement.
Even if the Unitary
Patent and Unified Patent Court are implemented, however, the UK will not be
participating, as the system is limited to members of the EU. It is
possible that the UK and the EU will negotiate a resolution to this issue by
which the system moves forward, but that is unclear at this point.
TRADEMARKS
Of all of the types of
intellectual property, European Union Trade Marks (“EUTMs”) will be the most
affected by BREXIT. The EUTM is a trademark that is valid and can be
enforced in all member states of the EU. Once the UK is out of the EU,
the EUTM will have no effect in the UK.
The UK may adopt
regulations that allow an EUTM to be automatically registered in the UK,
maintaining the mark’s priority. However, because trademark rights are
based on use of the mark, the owners who want protection in the UK will have to
show use of the mark in the UK, and those who want protection in the EU will
have to show use in the EU.
EU trademark owners
should consider where their marks are being used and will be used in the
future, and plan to obtain trademark registration in both the EU and UK if
necessary. Because of this, it is expected that the UK Intellectual
Property Office will be faced with a large increase in trademark applications,
resulting in delays in registrations.
In addition, BREXIT will
cause the enforcement of trademark rights to become significantly more
complicated and costly. Injunctions currently in place for EUTM owners
will not be valid in the UK. Owners will need to file new infringement
actions in the UK courts to obtain new injunctions against infringers
previously covered by an EU injunction. In the future, trademark owners
will need to file two infringement actions if their mark is registered in both
the UK and the EU, one action in each court system.
Lastly, EUTM owners may
face challenges to their EUTMs if their sole use was in the UK. After the
UK exits, these marks could be cancelled, revoked, or not renewed if they have
not been used in the EU.
COPYRIGHTS
Copyrights will probably
not be affected directly by BREXIT as copyright law in Europe is governed by
the laws of each country. The UK has its own copyright laws and is also a
member of various international treaties protecting copyright. Thus,
rights of copyright owners in the UK will continue to be protected under both
sets of laws.
One area that will
likely be affected by BREXIT are laws governing internet service providers and
information stored in the cloud. The EU has been developing this area of
law for the last several years. At this point, however, it is uncertain
whether the UK will have its own set of laws separate from the EU’s laws.
TRADE
SECRETS
The EU has been working
on a uniform trade secrets law, which will define trade secrets and provide
uniform remedies. If the EU adopts the law, the UK may be required to
also adopt it depending on the method by which the exit is accomplished.
Again, it is uncertain how this will be resolved.
LICENSES
Licenses may be affected
by BREXIT, depending on their terms. Licensors and licensees should
review existing licenses to determine whether the defined territory covers both
the EU and the UK and whether the dispute resolution procedures will be
applicable to the appropriate territory. The parties may need to enter
into amendments or new licenses to clarify their rights.
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