March 21, 2018

On 19 March 2018, following further negotiations with the UK Government from 16 to 19 March 2018, the European Commission updated its draft text for the Withdrawal Agreement that would govern the UK’s withdrawal from the European Union and Euratom, if agreed.  As has been announced more widely in the press, the UK and the EU have now reached agreement on most aspects of the draft text.

Agreed IP provisions

Agreement has been reached on most of the intellectual property (“IP“) provisions.  In particular, it has been agreed that a proprietor of an EU registered IP right would be entitled to convert that right into a new ‘cloned’ national UK IP right after the end of the transition period on 31 December 2020.  It has been agreed that the new UK IP right would not be subject to re-examination by the UKIPO or other UK authority and the new UK IP right would enjoy all the existing features of the existing EU IP right, for example, its priority date and duration.

It has also been agreed that a proprietor of an existing unregistered Community design right or database right at the end of the transition period would be entitled to an equivalent UK right for the duration of the term of the Community right.

IP provisions where there is currently no agreement

What is not yet agreed, as we predicted in our article published on 5 March 2018, is whether a proprietor of an EU IP right will have to make an application and/or pay a fee to convert the EU registered right to a ‘cloned’ UK right.  As there would be no re-examination, this is a procedural question of where the administrative burden should lie: on proprietors of EU registered rights, or on the UKIPO and other UK authorities?

The other areas of disagreement appear to be on geographical indications (and related rights) and the transitional provisions relating to pending supplementary protection certificate applications at the end of the transition period.  Proprietors or prospective proprietors of such rights will therefore have to continue to monitor developments closely.

Where does this leave proprietors of EU IP rights?

Given the significant degree of apparent consensus, the position has not changed substantially since our previous article following publication of the Commission’s draft Withdrawal Agreement.

Proprietors of EU IP rights (except for geographical indications and supplementary protection certificates) should draw comfort for the basic agreement that they will be entitled to enjoy a ‘grandfathered’ UK national right after the end of the Brexit transition period.  But it may be that proprietors will have to positively ‘opt in’ in order to continue to enjoy protection in the UK and there may be a direct cost attached to that.  And the UK has still not yet indicated whether it will legislate to replace unregistered Community design rights, as new such rights will cease to arise after the end of the transition period, as matters stand.

Of course, there also remains the general risk that the draft Withdrawal Agreement is not signed, Brexit talks collapse and the UK walks away without a deal.  For this reason, those filing registered rights in the EU may wish to remain cautious and continue to file separate UK rights within the relevant priority periods.

Please note that this news update is not advice and should not be relied upon as such.  Should you have any questions or concerns about your IP position after Brexit or in the light of the draft Withdrawal Agreement, the Wiggin IP team would be pleased to help.