What Brexit Will Mean For Intellectual Property – Harbottle & Lewis LLP

What Brexit Will Mean For Intellectual Property – Harbottle & Lewis LLP

We don’t know what relationship the UK will
have with the EU post-Brexit – other than not being a member state. Every
business must plan an enterprise-wide review of its intellectual property
licence and distribution agreements to establish any requirements for
renegotiation (and possibly, termination).  The most obvious point being
that agreements defining a territory as “the EU” will almost certainly have to
be interpreted as excluding the UK from the date of exit.

The departure of the UK from the EU could
undermine much of the rationale for existing licence arrangements that are
drafted on an EU-wide basis. This could result in pressure to terminate or
renegotiate, and potentially litigation.

EU law must be complied with in the UK
until we leave. However, Directives that have not yet been implemented (such as
the recent Trade Secrets Directive) will almost certainly not be
implemented.  Meanwhile, however, English courts may nevertheless be
obliged to apply the principles of such directives whether or not implemented.

Depending on the approach taken by law
makers, the principle of exhaustion of rights might no longer apply in the UK,
unless we become an EEA member like Norway. If so, it would be possible to use
IP rights to block any imported genuine goods at the UK border, whatever their

Obviously, the EU-wide IP rights, such as
the EU trade mark and Community design rights, will no longer include the UK
once we leave the EU. This has practical and cost implications for IP managers
in terms of filing strategies.  Unless some kind of automatic conversion
of rights is established as part of the exit transition, action will need to be
taken well in advance of leaving the EU, to ensure protection in the UK. 
It may be possible to convert EU-wide marks to national rights, or new filings
may be required.  A massive disadvantage of new filings will of course be
the loss of priority, unless again that is catered for by transitional

Remedies for infringement of intellectual
property rights will change. In particular, terms settling past disputes, and
cross-border injunctions granted by courts, will have to be reassessed. 

Litigation strategies will also need to be
reassessed, since the jurisdiction rules under the Brussels Regulation might no
longer apply. This will affect choice of forum for future disputes.

Much of what we have come to understand as
enshrined principles of IP law will be open to reinterpretation. Decisions of
the CJEU will continue to have effect indirectly as a result of past decisions
of our appeal courts based on CJEU judgments.  Eventually, those decisions
will be reassessed.  Many may view this as a welcome opportunity for the
English courts to simplify and clarify some of the harder concepts of, in
particular, trade mark law.

The Unified Patent Court system and the
Unitary Patent will not include the UK. This will also seriously delay the
commencement of the Unified Patent Court for the remaining member states, since
the UK’s ratification was essential to commencement and, further, the UK was to
be the location of one of the three central divisions.  UK businesses
holding EP patents still need to understand the UPC system, however, and in
particular must stay focused on the key current requirement of assessing
whether to opt EP patents out of UPC.  For the avoidance of doubt, none of
this affects the long-established EP patent system, which is not specific to EU
member states.

10.And finally – this doesn’t necessarily stop
with the UK. Businesses should be alive to similar issues looming in other EU
member states, and take care when drafting any EU-related IP agreements. 
There is no need for immediate panic, but Brexit will in due course have huge
implications for IP rights holders and licensees.  IP practitioners, and
rights holders, will be at the forefront of shaping how things play out.

Jeremy Morton, Partner
(+44) (0)20 7667 5293

Jeremy Morton leads the
contentious intellectual property practice at Harbottle & Lewis. He is a
senior intellectual property and technology law adviser and litigator in the
UK, with over 20 years’
experience. He advises on
a wide range of European IP law, contentious and non-contentious, including
patent litigation, copyright, trademarks, designs, trade secrets, as well as
data protection. He frequently advises in the technology, arts and
entertainment fields. He also advises on brand management.

Ed’s Note: This article
was originally published by the author here