UK Membership of the Hague Agreement Delayed

UK Membership of the Hague Agreement Delayed

On 9th January 2018, Sam Gyamih MP was appointed as a joint Minister for Higher Education at the Department for Business, Energy and Industrial Strategy and the Department of education, and the UKIPO has recently confirmed that he is responsible for Intellectual Property.  In the pre-Brexit years, news of a new IP Minister for the UK may have meant little of significance to anyone except, perhaps, a small minority of IP practitioners.  However, in the current political climate, he has had to ‘hit the ground running’, because the future of Intellectual Property legislation in the UK, post-Brexit, including legislation relating to the UK’s participation in international IP systems, seems to lie in his hands.

Previous IP Minister, Jo Johnson dealt with most elements relating to the UK’s participation in the Unified Patent Court (UPC), but there is one last legislative step remaining, and that is the Privy Council’s approval of one draft Statutory Instrument.  This approval was expected to take place in early February 2018, but as of today’s date, it has not yet happened and, until it does, the UK will not be in a position to ratify either the UPC’s Protocol on Privileges and Immunities or the UPC Agreement itself.

However, another significant issue in the IP world, is the UK’s membership of the Geneva Act of the Hague Agreement, which is an international system for the registration of designs ( see here for more detail).  The UK has, for some time (in fact, since 2008), effectively already been a member of the system by virtue of its EU membership so that:

  1. a UK entity could use the system; and
  2. entities of other member countries could effectively “designate” the UK by designating a Community design in their application.

 

 

Post-Brexit, the UK will need to be a member of the Geneva Act of the Hague Agreement for either 1) or 2) above to be possible.  It has, until recently, been expected that the UK would become a member of the Hague Agreement on 31st March 2018 and that this would come into force on 6th April 2018.  However, The Designs (International Registration of Industrial Designs) Order 2018 (S.I. 2018 No.23) was only published last month, and signed by Sam Gyamih on 11th January 2018.  There is one step remaining before the UK can be a member of the Hague Agreement, namely the deposition of the instrument of ratification (under Article 28(3) of the Geneva Act of the Hague Agreement) and only three months after that will the UK become a member.  So, whilst we can expect the instrument of ratification to be deposited fairly swiftly now, it seems we cannot expect to become members before June 2018, and it may be later than that.

 

 

WJ Comment: The UKIPO said, in its Explanatory Memorandum to the above-mentioned Order: “The result of the EU Referendum means that it is important to join [the Hague Agreement] in a national capacity.  If we do nothing, UK businesses will lose access to the international registration system when the UK leaves the EU” (see http://www.legislation.gov.uk/ukdsi/2017/9780111160794/pdfs/ukdsiem_9780111160794_en.pdf).  More generally, the UK’s independent participation in international IP systems will be, and remain, of paramount importance to the economic growth of the country when it leaves the EU and in the years following that, and we think that our new Minister has some interesting times ahead. 

Related News

US Inventor Declarations and Assignments
news

US Inventor Declarations and Assignments

After a patent application has been filed, the inventor may be required to sign and submit various forms.  What happens if this is several years into the patent process, and the inventor can no longer be reached to sign these forms?  And what can you do now to prevent any complications from arising?

UKIPO ending temporary fee changes on 31 March 2021
news

UKIPO ending temporary fee changes on 31 March 2021

The UK Intellectual Property Office (UK IPO) temporarily reduced or removed certain official fees associated with patents, trade marks and registered designs because of the disruption caused by the Coronavirus pandemic. However, the temporary fee changes are set to end on 31 March 2021.

Insurance for IP Litigation Costs
news

Insurance for IP Litigation Costs

If you own any intellectual property (IP) rights, are you concerned about your exposure to litigation, and how you will finance any legal action?  One way to address this concern is by means of an insurance policy.

Does owning IP rights improve economic performance?
news

Does owning IP rights improve economic performance?

A recent study performed by the European Patent Office (EPO) and the European Union Intellectual Property Office (EUIPO) has shown that companies which own at least one patent, trade mark or registered design generate on average 20% higher revenues per employee and pay their staff on average 19% higher wages compared to companies that do not own any of these intellectual property (IP) rights.

Let it go!
news

Let it go!

Keeping an IP budget afloat despite sunk costs.

The cost of securing IP can be heavily front loaded. Examples of such costs include patent drafting, pre-filing searches, filing fees, etc. These costs become “sunk” costs in that they cannot be recovered. Because IP protection can be a relatively long process, at any time during the process there are likely to be significant “prospective” costs: future costs that may be wholly or partially avoided depending on actions taken.

Turkish Declarations of Use
news

Turkish Declarations of Use

Have you recently validated your European patent in Turkey?  Did you know that in addition to paying annual renewal fees, Turkish law also requires you to submit a public declaration stating whether you have actively worked your invention in Turkey?

Managing your business-critical IP during the COVID-19 crisis
news

Managing your business-critical IP during the COVID-19 crisis

UK businesses are fighting for survival during the continuing COVID-19 outbreak and trying to trade under difficult conditions, the likes of which haven’t been seen in the living memory of most business people. If you’re afraid that your business is going to the wall, it probably isn’t the top of your mind to pay for a patent application for your new technology or a registration of the trade mark for your brand new clothing range, right?  Where is the money coming from to invest in such luxuries as IP, we hear you say, when staff are being furloughed and orders have been postponed?

Videoconferencing: the future of oral proceedings at the EPO?
news

Videoconferencing: the future of oral proceedings at the EPO?

The European Patent Office has announced that videoconferencing will become the norm for oral proceedings before examination and opposition divisions until at least 15 September 2021. But is this a taste of what the future holds for oral proceedings at the EPO?

aipex logo aipex logo aipex logo