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Friday, 5 January 2018

Brexit: requests to Govt from IP professional bodies

This Kat looks forward to the day when she is not inundated from all quarters with the B word. For the foreseeable future however, such incursions are a fact of life for those in the UK and the issues raised are something that the IP community will have to get to grips with.

She was therefore interested to hear about a note that was sent on 22 December 2017 by the Law Society (the body representing solicitors in England & Wales) to UK ministers and officials, including the Department for Business, Energy and Industrial Strategy (BEIS) and the Department for Exiting the European Union (DExEU) headed up by David Davis.

Seasons greetings from the UK IP professions

The note is also supported by key office holders of other organisations that represent the main IP professions (namely the IP Bar, CIPA, CITMA and IP Federation).  It provides a "short list" of the biggest areas where UK government action is necessary to ensure continuity and certainty of IP law and to prevent disruption both to undertakings which use IP services and IP service providers.The letter is now available on the IP Federation's website.

Recommendations

The note has key recommendations for the UK Govt and requests that it takes action in the following areas:

1. Continuation of EU-derived rights - either by negotiating a package of rights to secure the continuation of all existing substantive and procedural pan-European rights and defences, or if that is not achievable, by legislating for the automatic continuation in the UK of EU rights;
2. Unitary Patent/Unified Patent Court Agreement - the note seeks confirmation that it is the UK's intention to stay in the UPC following Brexit, and asks that the UK work with UPC member states to bring the UPC/UP into effect and ensure the UK's participation following Brexit;
3. Exhaustion of Rights - the note points out that industry needs to know what exhaustion rules will apply post-Brexit to goods first placed on the market: in the UK, in the EEA or internationally, and invites the government to consult widely and publicise its position on exhaustion;
4. Rights of Representation - the government is urged to treat continued rights of representation of UK IP professionals based in the UK as a priority and ensure that they continue in all relevant EU forums;
5. Mutual recognition of judgments - the government is urged to "urgently negotiate arrangements with the EU that continue in force the substance of the current arrangements under the Rome and Brussels regulations, so as to give the fullest reassurance."  This Kat notes that this issue is important for all litigation in the UK.
The note also highlights that many other important points of detail in the field of IP will need to be negotiated and resolved as part of Brexit, and concludes that the necessary transition period is likely to be "several years".  This Kat cannot recall any other instances of cooperation across all the IP professional organisations on such broad topic areas, and welcomes the initiative taken by these bodies during this crucial period.

14 comments:

Anonymous said...

1. What EU-derived rights? The UK is leaving the EU so clearly not all EU-derived rights can/will/should continue.
2. UPC: Confirmation the UK will stay? It hasn't ratified yet so nothing to stay in. IP profession reps are looking after themselves - it is in their interests as we all know.
3. Exhaustion. yes, would be great to know, but it will be up to the courts to interpret the UK legislation post-Brexit. Bring some cases to learn the position. Asking the govt to publish its position seems to be a waste of time. No new law will be created in the forseeable future.
4. I'm a European Patent Attorney, so I don't see a problem. Is there one?
5. Judges will continue to consider each other's decisions to the extent they are applicable under national law. Can't have mutual recognition where the law's differ? SPC cases will be fun in the UK.

Kant said...

1. While EU rights existing at the time of Brexit should automatically become UK national rights, it is difficult to see why new EU rights should extend to the UK.
2. European patent attorneys will retain their right to assist practicing attorneys at law, so not a big deal for CIPA. The UK staying in the UPC if it is up and running by the time of Brexit seems problematical. Much simpler to enact legislation to the effect that UPC judgments in respect of European patents having effect in the UK will be extended automatically.
3. With regard to representation rights, these will only be accepted if the UK joins EFTA, which seems unlikely.

Dear lawyers wake up said...

As the UPC was not part of stage 1 of the Brexit negotiations, there is little chance that it will be part of the 2d stage. There are other, more urgent, problems to tackle than to care for the possible loss of trade of lawyers firms.

Post Brexit participation in the UPC means accepting supremacy of EU Law and acceptance of decisions of the CJEU. How can this be politically sold as part of Brexit? You cannot have the cake and eat it!

What matters with this plea is not post Brexit participation, but ensuring that there is a return on investment, and that envisaged profits for the lawyer firms are not lost.
See also
https://www.lawgazette.co.uk/law/dont-throw-out-euro-patent-court-along-with-eu-ip-experts-urge/5064142.article?utm_source=dispatch&utm_medium=email&utm_campaign=%20GAZ141016#commentsJump

I would take more seriously what the House of Lords intends to do:

http://ipkitten.blogspot.de/2017/12/role-of-cjeu-post-brexit-to-be.html

As UK remains member of the EPC, at least patent attorneys can still continue to act before the EPO, so the problem is indeed primarily for the lawyers firms.

Tough luck, but c'est la vie!

Techrights: fingers off, directly or indirectly, not even by link!!

Anonymous said...

"Much simpler to enact legislation to the effect that UPC judgments in respect of European patents having effect in the UK will be extended automatically."

Nope.

Andy said...

I see a fundamental problem with the continued mutual recognition of judgments post Brexit (let's face it they don't mean mutual in a two-way sense). The CJEU clarifies EU law (Directives and Regulations) in the context of maintaining one of the pillars of the Single Market, namely the free movement of goods and services. A primary aim for the CJEU is to advance the harmonisation of the internal market. A recital to this effect can be found in virtually every Directive of relevance to the IP area.
However the UK government has publicly declared that it will not seek to remain in the Single Market and it will actively seek other markets outside the EU. To that extent, opinions and judgments of the CJEU made after Brexit, even if they refer to Directives etc made before Brexit (ie those Directives which are to remain legally binding in the UK), will be made based on assumptions which are incompatible with or possiblty inimical to the interests of the UK after Brexit.
As has already been mentioned in the comments above, the UK courts may wish to take note, post Brexit, of relevant CJEU decisions, but 'mutual recognoition' suggests something rather more binding in its effect.

Garfield said...

Dear Anonymous of 5 January at 12:10

You ask what EU-derived rights? For example, EU registered trade marks and EU registered and unregistered design rights, which all currently apply in the UK. Many companies (including UK companies) rely on them for their UK protection. The IP professional bodies are urging the Government to consider how these rights will continue, so that they don't just cease to exist here.


Dear Andy

I think you and Anonymous have misunderstood the meaning of "mutual recognition of judgments". It's not about considering and following case law from other countries.

Suppose an English court issues a final judgment saying that a German company has infringed your UK national patent by importing product X into the UK from Germany. The court awards you damages and an injunction to prevent future infringement.

But the German company fails to pay the damages and continues importing. How will you deal with that?

It's important in this situation that you should be able to go to a German court with jurisdiction over the defendant and ask it to stop the imports to the UK, and to enforce the damages award. Moreover, you want the German court to just recognise the English court's judgment automatically, without rehearing the infringement case and deciding whether the English judgment was correct. And without considering whether the 10% damages award was reasonable when a German court might only have awarded 5%.

That is what recognition of judgments is about. In the EU, it is achieved by the Brussels Regulation (Recast). Of course, it is mutual: an English court will recognise and enforce a German court's decision, just as a German court will recognise and enforce an English court's decision.

But when we leave the EU, the Brussels Regulation will no longer apply. The IP professional bodies are therefore urging the Government to negotiate something to replace it.

Andy said...

Thank you, Garfield.

If your explanantion is what was meant by 'mutual recognition of judgments' then I would have thought a clearer term for the doctrine was comity.

Clearly IP judgments form a part of a much wider body of civil matters for which such mutual recognition is desirable. If an agreement to replace the function of Brussels IIbis is required (and I would agree it probably is), then that could be negotiated at leisure, either unilaterally with all the remaining 27 member states, or bilaterally with the EU as a whole. Given that such an agreement is obviously of mutual benefit to the UK and all the member states, it is hardly likely to be contentious, or indeed, I humbly suggest, necessary to include it under the heads of terms to be discussed during the phase II talks aimed at a trade agreement.

Anonymous said...

Garfield, I am well aware that certain EU-derived rights will continue, but the post did not discriminate between rights covering the UK that need to continue and all rights. There has never been a likelihood that UK rights will be lost.

"It's important in this situation that you should be able to go to a German court with jurisdiction over the defendant and ask it to stop the imports to the UK, "? How about the UK court ordering payment from a UK subsidiary, and/or impounding imports. Whatever the possibilities, this is no different than issues from non-EU countries, so there is absolutely no reason why special arrangements should apply post-Brexit..

Garfield said...

Dear Andy

"Recognition of judgments" is a well-understood term.
https://en.wikipedia.org/wiki/Enforcement_of_foreign_judgments#Definition_of_terms

As you'll see, the article says it can indeed be based on comity, but it also suggests that's not how it works in the English courts.

Of course you are right that this affects a much wider area than just IP. However, it does fit naturally within the wide-ranging free trade agreement which the Government says it wants. It promotes free trade by giving parties confidence that their trading agreements will be enforceable in the courts of other countries.

I don't know whether the EU27 countries would be free under EU rules to negotiate individual agreements unilaterally.

Here's some background:
https://www.law.ox.ac.uk/business-law-blog/blog/2017/06/brexit-negotiations-series-negotiating-brexit-recognition-and

Garfield said...

Anonymous: "I am well aware that certain EU-derived rights will continue"

The point is that the Government needs to address the question of how they will continue. Otherwise the default position is that they won't.

"How about the UK court ordering payment from a UK subsidiary..."

If there is a UK subsidiary, and if it was responsible for the infringing imports. Otherwise you can't get a judgment against a subsidiary.

"...and/or impounding imports."

A last resort which is quite likely to be ineffective, especially if they arrive on ad hoc basis as individual items, and if you don't know when and where to direct the customs officers.

Anonymous said...

"4. I'm a European Patent Attorney, so I don't see a problem. Is there one?"

The right to be a representative for Community designs before EUIPO, unless you don't do any designs work, in which case perhaps not. Also UK contracting into Hague agreement (not sure UK membership will come in time - this is something that is in the pipeline, but I haven't seen a definite date).

Anonymous said...

No, I don't do designs. I'm not able to represent clients before the US Supreme Court, either, but I still don't see a problem.

The point I am making simply mirrors that of others, in that these 'representations' are based on self-interest and not the interest of the IP community/industry/the public/etc.

Outsider said...

And Jo Johnson moved sideways to transport. Haven’t seen if he keeps his IP brief but presumably not.

So time to educate another junior minister?

Outsider said...

In fact, JJ replaced by Sam Gyimah, who campaigned for remain, according to the Guardian.

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