By Deborah Kirk

The European Commission (EC) has released a position paper on its objectives for the Article 50 Brexit negotiations with the UK regarding Intellectual Property Rights (IPRs). The EC has effectively set out six key principles for the Withdrawal Agreement, including:

    1. Continued legal protection for certain IPRs: Any IPR with unitary character (e.g., EU trademarks, Community designs) granted before the withdrawal date should automatically be treated in the UK as having the same rights that the UK currently enforces under the EU regime, at no extra cost to the IPR holder. This continued protection will also include geographical indications. The EC would require the UK to implement domestic legislation to achieve this when necessary.
    2. Continued priority benefits for certain IPRs: From a procedural prospective, any IPR applications placed before the withdrawal date that have unitary character and are still under prosecution (i.e., ongoing) at the time of withdrawal, are to maintain any priority benefit they have when applying to receive the equivalent recognition in the UK.
    3. Continued protection for supplementary protection certificate or paediatric extensions: Similarly, after withdrawal it should be possible in the UK to receive a supplementary protection certificate or paediatric extensions if an application was submitted before and is ongoing at the withdrawal date. In addition, any protection in the UK should be equivalent to the protection afforded under the EU regime.
    4. Continued protections for database rightsholders: Database rightsholders should continue to enjoy the same protections after the withdrawal date in the EU27 and in the UK in relation to those databases. Conversely, the UK should not exclude EU27 nationals and companies from enjoying database protection in the UK on the grounds of nationality or establishment.
    5. Continued application of exhaustion: Any IPRs that were exhausted in the EU before withdrawal should remain exhausted in the EU27 and the UK. The conditions for exhaustion should be those defined by EU law.
    6. EU27/UK registry cooperation and data transfers: In order to facilitate the principals regarding IPRs with unitary character, the Withdrawal Agreement should encourage cooperation and data transfers between the IPR registries of the EU27 and the UK.

These principles shed light on the EC’s approach to handling IPRs post-Brexit. However, the UK’s willingness to accept these principles remains to be seen.

On a final note, ambiguity still remains over the future of the Unitary Patent and the Unified Patent Court. Participation in this is currently proposed only for EU members; therefore, in order for the UK to remain involved, it would need to participate in the Withdrawal Agreement. However, such involvement would also make the UK subject to the Court of Justice of the European Union (CJEU)’s jurisdiction, which could be considered inconsistent with the concept of Brexit.

This post was prepared with the assistance of Elizabeth Longster in the London office of Latham & Watkins.