Tuesday, 28 June 2016 08:13

Brexit: Business as usual for IP, trademarks, say lawyers Featured

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Changes in patent, trademark and design practices in the wake of Britain's decision to leave the European Union are likely to be fairly limited and easily manageable, according to IP experts.

Lawyers from Shelston IP, one of the oldest specialist intellectual property firms in Australia and New Zealand, said as the process for the UK to leave the EU would take some time, the exact implications for protection of patents, trademarks and designs were as yet unknown.

"Nonetheless, we can offer reassurance at this stage that any changes are expected to be fairly limited and easily managed," the firm said.

As iTWire reported, the process of Britain's withdrawal from the EU will begin only once the new prime minister who takes over from David Cameron activates Article 50 of the Lisbon Treaty. After that there is a period of two years for Britain to negotiate its withdrawal.

The Shelston IP lawyers said as far as patents went, no significant modifications were expected.

"Specifically, Brexit does not affect the UK's membership of the European Patent Convention (EPC) system as the EPC is entirely independent from the EU. Hence, under the EPC system widely utilised by our Australian and New Zealand clients it will still be possible to validate a granted European patent in the UK.

"Attorneys who are based in Britain and presently instructed by Shelston IP will keep filing patent applications before the European Patent Office (EPO). It is business as usual, therefore, insofar as standard European (EPC) patent applications are concerned."

The UK was one of three countries required to ratify legislation to bring the much-anticipated European Union Patent (EUP) and the Unitary Patent Court (UPC) into force, they said.

Britain would not now ratify the legislation and the future of this new system was up in the air.

Grant Shoebridge, a principal at Shelston IP, told iTWire that the procedure for the existing European patent system was that the EPO granted a European patent after which the applicant chose the European countries where they wished to enforce the patent. This would require all or part of the patent to be translated into the national language of those countries.

"The proposed unitary patent provides a more simplified option because it involves a single patent that is valid in all European member states with the exception of Spain and Croatia, who have decided not to participate in the unitary patent system," Shoebridge said in response to a query.

"The advantages of the unitary patent are reduced translation requirements, and administrative costs. For example, if the patent is granted in French or German, only an English translation is required. If the patent is granted in English, only one translation of any EU state is required."

He said the unitary patent system would be accompanied by a new unified patent court system. "This is a substantial change of judicial procedures which will permit a patent to be enforced or challenged in a single court action that covers all the participating EU states. This contrasts with the current system which involves patents granted by the EPO being enforced and challenged by individual EU state courts. This (the new system) should greatly reduce litigation costs."

Shelston said a statement issued on 24 June by the president of the EPO, Benoît Battistelli, stated that in relation to the EUP the EPO expected that the UK and participating EU states would find a solution to allow a full implementation of the new system.

As far as trademarks are concerned, the lawyers said existing practice was that UK trademarks were obtained either by national registration or through EU registration, the latter being until recently known as a Community Trademark Registration, or EUTM.

"When Brexit is completed, EUTMs will cease to apply in the UK. However, it is expected that the transitional arrangements will include a mechanism for the conversion of EUTMs to UK trademarks," they said. "Naturally, EUTMs used only in the UK would become vulnerable to non-use revocation unless, of course, they are put into use in other EU member states."

They pointed out that as Britian was part of the Madrid Protocol — through which trademarks could be registered in multiple jurisdictions — a national UK trademark registration would continue to be available through the protocol.

The Shelston IP lawyers said the scenario for design registrations was similar to that for trademarks. "Once Brexit is effected, existing Registered Community Designs (RCDs) will cease to apply in the UK. However, transitional arrangements similar to those anticipated for trademarks are likely to be put in place such that current RCDs are likely to be afforded protection in the UK," they said.

However, once the withdrawal took effect, new RCDs to cover the UK would not be available, hence a separate UK national design registration application would be required.

"While we emphasise that any changes resulting from Brexit will not come into effect for some time, it is always prudent to review IP strategies regularly to ensure that they align with global economic conditions and legislative changes," the lawyers said.

"In addition to ensuring that applications for IP rights are lodged via the correct mechanism (an international system or the national UK system) and ensuring compliance with any requirements relating to the transitional provisions, we suggest that companies, institutes or universities also review their contracts to ensure that the terms accurately reflect the parties' intentions in the post-Brexit regime."

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Sam Varghese

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Sam Varghese has been writing for iTWire since 2006, a year after the site came into existence. For nearly a decade thereafter, he wrote mostly about free and open source software, based on his own use of this genre of software. Since May 2016, he has been writing across many areas of technology. He has been a journalist for nearly 40 years in India (Indian Express and Deccan Herald), the UAE (Khaleej Times) and Australia (Daily Commercial News (now defunct) and The Age). His personal blog is titled Irregular Expression.

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