Originally featured in the 2018 Special IP Report
Brexit presents a daunting range of challenges to businesses of all kinds. Increasingly important to the value of any business, intellectual property (IP) rights will be impacted in a variety of ways.
Much of the focus so far has been on securing those rights in the UK post-Brexit that are currently overseen by European Union systems. But there are wider implications for owners of IP. For example, UK attorneys or representatives might lose their right to represent clients before the European Union Intellectual Property Office (EUIPO).
“Anyone can file an EU trademark application or a community design application,” explains Victor Caddy, leading partner, and trademark and design attorney at Wynne-Jones IP, a leading firm of patent and trademark attorneys. “The real question is what happens after Brexit given that only a national of a European Economic Area member state can represent you subsequently in prosecuting your application or dealing with other matters.”
Brexit presents challenges for many thousands of UK businesses, some of whom haven’t even realised it yet
To overcome these difficulties, some UK firms plan to divert their EUIPO work to branch offices in the 27 remaining EU states. However, as Mr Caddy points out, many of these offices are best suited to serving local clients which is, after all, why they were originally set up.
“The challenge is to retain links between IP owners and their existing contacts in the UK, those attorneys they already know and trust, while minimising problems caused by differences in national laws, languages, cultures and traditions – as well as the tricky question of who can charge the client for the work that’s been carried out,” says Mr Caddy.
As Brexit grinds on and as IP holders and attorneys struggle with these important issues, a Europe-wide IP business is attracting increasing interest. Formed in 2010, AIPEX, the leading European IP law firm, has offices in 13 of 27 EU states. As a Europe-wide operator it offers a tailor-made solution to managing the IP portfolios of pan-regional and international businesses.
The firm’s team of more than 500 highly qualified professionals, over 200 of whom are qualified attorneys from the member firms, means it can work across a company’s entire IP portfolio, including patents, trademarks and design, as well as key areas such as infringement, prosecution, renewals and strategy.
Through AIPEX, Wynne-Jones IP, which is a founding member, will be able to continue to represent its clients before the EUIPO. “AIPEX will be the address for service for all the community designs and EU trademarks on the books of Wynne-Jones IP, so we will retain complete control of all of our clients’ affairs,” says Mr Caddy. “Our clients in the UK will notice no difference from how things work now and there will be no double-charging.”
The criteria for one AIPEX client looking to reduce the number of attorneys it was using across Europe, included cost, the quality of work produced and a good professional relationship. “What clinched the deal was AIPEX’s ‘hub-and-spoke’ model – a multi-jurisdictional presence in Europe with a single point of contact,” says the client.
Another company Rotork plc, which manufactures electric, pneumatic and hydraulic valve actuators and gearboxes, says: “As well as managing all our general IP requirements, Wynne-Jones IP provides a ‘virtual IP department’ service… whereby all our engineers globally can liaise directly with Wynne-Jones IP regarding their queries about patents, trademarks and designs.”
The founders of AIPEX wanted the best member firms, according to Frank Reijnen, its chief executive, and in the UK that was Wynne-Jones IP. “We hear time and time again what a good reputation it has, and how its clients value its commerciality and commitment to client care. This, of course, benefits AIPEX,” says Mr Reijnen.
Mr Caddy concludes: “Brexit presents challenges for many thousands of UK businesses, some of whom haven’t even realised it yet. But, with access to an IP pan-European law firm with expertise in all sectors across all EU states, they can turn that challenge into an opportunity.”