The European Commission has just released a position paper on Brexit and intellectual property, which we have commented on at length for Intellectual Property Magazine (here). In summary, the main features are these:
All registered EU trade marks, registered Community designs, unregistered Community designs, Community plant variety rights, protected geographical indications, protected designations of origin, and other geographical indications, traditional speciality guaranteed and traditional terms for wine registered under a number of EU regulations should be automatically recognised as enforceable intellectual property rights in the UK. So too, in principle, should pending applications for registration/protection, and Supplementary Protection Certificates for patents. Patents per se are not considered in the position paper because European patents are not under the control of the European Union.
There should be no fees for any of this, and all renewal dates, priorities, seniorities, and claims to genuine use and reputation should be preserved.
Database rights of UK and EU nationals and companies should be mutually recognised.
Goods for which intellectual property rights were exhausted in the EU prior to Brexit should remain exhausted in the EU and the UK. Exhaustion means that, when a product branded with a registered trade mark is imported into a European Economic Area country with the trade mark owner's consent, the trade mark owner cannot oppose the re‐importation of this product into another European Economic Area country.
These proposals ought to be good for rights holders. However, as our commentary in Intellectual Property Magazine makes clear, the situation “on the ground” is a lot more complicated than the EC’s Position Paper suggests. It also remains to be seen whether UK Government will feel able to pass the costs on to British tax payers. There are roughly three times as many EU trade marks as there are UK ones and nineteen times as many EU designs as UK ones, so the costs of recognising all of these extra rights in the UK will be significant.
So far, the only response we have heard from anyone associated with the UK IPO is that the EC’s proposals are “interesting”. Undoubtedly, however, it would be beneficial if the UK Government could reassure businesses, especially ones that want protection in the UK, but are currently reliant on EU rights, that those rights will continue in force in the UK after Brexit. This would be especially important for owners of registered Community designs, which cannot be validly re-filed in the UK for lack of novelty.
As soon as we hear anything more definitive on the part of the UK Government or the UK IPO, we will report it in “2306”.
In the meantime, do please read our full commentary on the EC’s Position Paper in Intellectual Property Magazine and let us know if you have any questions.
Coronavirus - UK IPO, EPO and EU IPO extensions and support
A simple overview of the current status from IPOs. Last updated 18th May 2020.
Is it unethical to patent?
The Covid-19 pandemic has prompted many companies to invest time and effort in developing technology that is aimed at helping care for, test, or treat people suffering from the disease. In normal times, these might be considered normal commercial activities and would be considered for patenting without a second thought. However, the fact that these developments are typically not being motivated by pure commercial gain, but by a desire to do something for the public good causes many companies to question whether or not they should seeks patents or any other form of intellectual property protection.
Morgan Motors Case Study
Morgan Motor Company originally thought their most important asset was their range of hand built sports cars, after working Wynne-Jones, they realised their most important asset was their brand.
UPDATE - UK IPO support for those affected by Coronavirus
Exceptional extensions of time limits at the EUIPO to end on 18 May 2020.
The Executive Director of the EUIPO has announced that the all time limits on trade mark and design matters at the EUIPO expiring between 9 March 2020 and 17 May 2020 will expire on 18 May 2020. The EUIPO is not extending these time limits further.
If you have any questions then please get in touch with your usual Wynne-Jones contact.
BREAKING NEWS - German Federal Constitutional Court decides on UPC complaint
The German Federal Constitutional Court has now issued its long-awaited decision (source) in case 2 BvR 739/17 which was a complaint against the German Ratification Law under which Germany was to ratify the UPC.
EPO announces extensions to deadlines due to COVID-19
On Sunday 15 March 2020 the EPO published a notice advising it is invoking the provisions of Rule 134(2) EPC, and has extended all periods expiring on or after publication of the notice to 17 April 2020. This may be extended by the EPO upon publication of a further notice.