Quarterly International Ip Law Update

• Jurisdiction: European Union
• Citation: Vol. 44 No. 2
• Publication year: 2019
• Author: David Tseng
• topic: Business of Law,Trademark,Patent law,Intellectual Property,Copyright law

Quarterly International IP Law Update

David Tseng
Dorsey & Whitney LLP

Mariana Noli
Noli IP Solutions PC

THE IP IMPACT FROM A NO-DEAL "HARD BREXIT"

Originally set for April 12, 2019, the European Union ("EU") postponed the deadline by which the United Kingdom ("UK") would have been expelled as a member state to October 31, 2019 in response to the UK's request.

This extension gives the UK additional time to negotiate a withdrawal agreement with the EU to avoid a "Hard Brexit"—UK leaving the EU with no practical bilateral agreements in place. Avoiding a no-deal Brexit is not guaranteed, given the difficulties the UK has experienced in the exit process. Below is a summary of what to expect in the event of a no-deal Brexit.

Patents¹

The European Patent Office ("EPO") is governed by the European Patent Convention, which is independent of the EU. Accordingly, a no-deal Brexit will generally have no impact on the right to apply for an EPO patent that covers the UK.

One notable area of potential impact would be the supplementary protection certificate ("SPC") framework. An SPC is an IP right that extends the period of patent protection for pharmaceutical or agricultural products beyond the expiration date of the patent.

UK intends to preserve the existing SPC legal framework in the event of a no-deal Brexit. This means that pre-existing UK SPCs will remain valid. Prospectively after the split, the UK IP Office ("UKI-PO") would issue its own distinct and parallel SPCs. At the same time, SPCs for other EU member states would remain available for all.

The UKIPO has expressed the intent to stay consistent with the EU SPC regime, anticipating a continuation of the EU framework so that the treatment of SPCs is likely to remain harmonized between the UK and the EU in the near future. However, divergence may occur in the future because UK courts would no longer refer questions of SPC interpretation to EU courts.

Another potential impact in regards to patents is UK's future commitment to the Unified Patent Court ("UPC"). The UPC is an international court created by treaty that will have jurisdiction over patent disputes across its contracting states. UK ratified the UPC Agreement in April of 2018. The UPC is not yet in force and is unlikely to be before the UK leaves the EU. The start date will be determined only after ratification by Germany. The status of UPC in the UK will be in doubt in the event of a no-deal exit.

Copyrights²

The UK is a signatory to several international treaties and agreements protecting copyright, such as the Berne Convention and the TRIPS Agreement. A no-deal Brexit will not impact the UK's status as a signatory to these pre-existing treaties and agreements.

However, the impending split will lead to many changes in UK copyright law because a substantial part of UK copyright law is derived from the EU copyright framework, with numerous references to the EU, the European Economic Area ("EEA"), and the EU member states.

As a result, the UK has introduced The Intellectual Property (Copyright and Related Rights) Regulations of 2018 that would amend UK copyright framework and remove references to the EU, EEA, or EU member states in UK copyright legislation in the event of a no-deal Brexit. If enacted into law, there would be significant changes to the UK copyright framework, specifically in regards to EU specific copyright-related mechanisms directed to reciprocal protections and benefits between member states.

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Here are some of the changes that would result.

First, current EU regulations allow EU consumers to access their online content services throughout the EU. This means that online service providers such as YouTube and Netflix are obligated to provide content ordinarily available in the UK to a UK customer temporarily present in any other member state. The same applies to non-UK EU customers temporarily visiting the UK. In the event of a no-deal exit, UK would withdraw from this EU agreement, and content service providers would no longer be allowed to offer this service.

Second, a no-deal exit would sever the currently unified regime for database rights, a form of IP directed to certain forms of computer records. Generally, a database right allows the owner to object to the copying of substantial parts of their database, even if data is extracted and reconstructed piecemeal. In the EU, database rights last for 15 years and a new set of rights are created whenever a database is substantially modified. If the UK leaves the EU without a deal, UK citizens will no longer be eligible to receive or hold database rights in the EEA. On the other hand, the UK will issue its own database rights eligible only to UK citizens.

The third change is directed to broadcast rights between member states of the EU. The EU framework follows a "country-of-origin" rule for obtaining permission to broadcast works. For example, if a TV network transmits a copyrighted film from one member state to another, they are only required to obtain the copyright holder's permission for the state in which the broadcast originates. This convenience will end in the event of a no-deal exit. This means that UK broadcasters may need to obtain permission from the right holder of every EU country where the broadcast is received. The proposed amendments to UK copyright law will seek to preserve the...