The IPO in Wales - the new epicentre for IP lobbying after Brexit?

The AmeriKat has been having a blissful few weeks away from the UK and the Brexit nightmare.  Her head has instead been filled with palm trees, ocean waves and beautiful Pacific blue skies.  That was until she looked at her email yesterday with news from the UK Intellectual Property Office alerting her to new guidance entitled "Intellectual Property and the Transition Period".

Tomorrow is Brexit Day.  What does that mean for IP lawyers?  It means that after tomorrow we will be in what is called the "the transition period".  The period starts as of 1 February 2020 and will end on 31 December 2020.  The UK will remain in both the EU customs union and the single market, and, for IP, business will continue as normal, e.g., the UK will remain part of the EU trade mark, registered and unregistered Community design systems.

As the Guidance states:

"There will be no disruption to IPO services or changes to the UK IP system during this transition period. The IPO will convert almost 1.4 million EU trade marks and 700,000 EU designs to comparable UK rights at the end of the transition period. These will come into effect on 1 January 2021. 

The arrangements in the IP section of the Withdrawal Agreement take effect at the end of the transition period. These arrangements provide legal certainty and protect the interests of rightsholders and users of the IP framework. 

The Withdrawal Agreement ensures continued protection of existing EU-level IP rights in the UK after the end of the transition period. 

This will ensure existing UK IP rights can be managed appropriately in line with existing domestic arrangements."

This Kat was probably not alone in being slightly bemused by the recent media reporting on the leaked “451-page dossier” describing US/UK talks on future trade arrangements. The BBC reportsthe dossier as showing that the US is interested in "extending patents” in the UK. How strange. Is the US government proposing some novel form of patent term extension currently unavailable to patentees in the UK? Fear not, IPKat is here to provide some clarity!

German ratification of the UPC is currently pending the outcome of a complaint in the German constitutional court. The court appears to have been taking its time in reaching a decision, prompting rumours that the court is stalling until the outcome of Brexit is clear. The issue of whether the UK can remain a member of the UPC after Brexit is currently shrouded in legal (and political) uncertainty, and may be highly dependent on whether the UPC comes into force before or after Brexit (IPKat: Can the UK become and stay a member of the UPC?). 

However, in a new development, the judge overseeing the German constitutional complaint to the UPC, Justice Peter Huber, has now deigned the rumours that the court has been delaying its decision, describing the allegation as "bullshit".

Such language from a Judge!

In the interview to Managing-IP, Justice Huber also confirms that he intends to decide the case in the first quarter of next year. Brexit is currently scheduled for the end of January 2020. It may therefore be touch-and-go whether the UPC comes into force (following German ratification) before Brexit. On the other hand, it has also been reported that, even if the constitutional complaint is overcome, the German Parliament may still delay ratification whilst the outcome of Brexit is unclear. Another false rumour?

In the interview, Justice Huber also appears a little peeved with the furore surrounding the case:

I've dealt with big issues before such as the European stability mechanism and never had a community like the IP community that has sent me a bunch of letters asking me to hurry up and trying to put pressure on the courts

But we are the top court of Germany and not here to be put under pressure. 

The issue of the UPC is certainty one to incite strong opinions, as IPKat is also all-too-aware (see comments, this Kat stands by her use of the term "esoteric" by the way..., more on this to follow). However, if Justice Huber makes anything clear, it is that German constitutional judges, at least, intend to ignore the vitriol.

The European Parliament Think Tank has issued a paper on the question of whether the UK can remain a member of the Unitary Patent Court (UPC) in a post-Brexit world. The cautious conclusion of the paper is that “it seems not per se legally impossible that the UK can stay within the UPCA [UPC agreement], even when not an EU Member State”. The problem of the UK’s continued membership of the UPCA arises from the fact that, when the UPC was conceived, nobody envisaged the UK unilaterally deciding to leave the EU.

A view from the Mary Quant exhibition at the V&A

On Monday evening, the Victoria & Albert Museum saw over two-thousand attendees pour through its marble and tiled halls for AIPPI's Cultural Evening.  IP lawyers from across the world enjoyed access to the V&A's incredible temporary and permanent exhibitions including the epitome of London fashion for modern women - Mary Quant - and one of the AmeriKat's favorite fashion photographers - Tim Walker.  With the courtyard lit up in the London logo colors and live music playing in the grand lobby and echoing through the Cast Court, the cultural evening was immersed in IP.  Hans Eriksson (Westerberg & Partners) reports on sessions from the next day, Day 2, where debate on Brexit, fashion and customs enforcement continued.

Over to Hans:

"Following Monday’s cultural evening at the Victoria and Albert Museum, spent hobnobbing with the IP glitterati while celebrating all things British (cask ale, football, marmite etc.), it was a sobering wake-up call that the first panel the following morning was on the timely issue of Brexit & IP: an update.

Moderating the panel of government, industry and private practice participants was Daniel Lim, Kirkland Ellis. Himself a Malaysian-born Aussie working in the UK for a US firm, the moderator exemplified the global scope of the panel and the international interest in the Brexit issue. Daniel gave the early morning capacity crowd a quick update on the Brexit state of play, distinguishing between political uncertainty (playing out just a stones’ throw away from the conference center on the steps of the Supreme Court) and legal uncertainty, which was the topic for the morning’s discussion before handing it over to the panellists.

Adam Williams, Director of International Policy at the UK IPO, reiterated that the UK IPO will make certain that the UK remains a world class IP environment after Brexit, no matter the manner of the adieu. He described the organization’s outreach to UK companies and especially SME’s, its publication of technical notices and laser-like focus on mitigating the effects of a no deal scenario. He completed a spirited run-through of the different IP rights and how they may be affected by Brexit, the current state of the Unified Patent Court, exhaustion and enforcement in record time. A crowd question from what was apparently no less than a member of the House of Lords reminded us of the political charge of the Brexit debate (and enabled this foreigner to check off meeting a Lord from his London Visit To-Do List).

The next speaker was Ewan Nettleton, Senior Patent Counsel at Novartis. Ewan described the regulatory challenges and opportunities facing the pharma industry post-Brexit, focusing in particular on the SPC regime, paediatric rewards and regulatory exclusivities. He set out the small but potentially important differences in the regimes as currently understood through a football metaphor, using a picture of the brave Swedish national team (but curiously not this one) and discussed what these differences portend for the industry. The takeaway being that more works need to be done insuring the smooth functioning of the pharma market.

Aurélia Marie, Cabinet Beau de Loménie, followed with a practical view of steps to be taken in the world of soft IP following Brexit, focusing on the comparability of the new UK rights to the EU rights, renewals, recordals and deadlines. In order to prepare for Brexit in whatever form it comes, Aurélia emphasized the importance of working holistically with right holders to review portfolios and commercial agreements in order to protect, manage and maintain rights. Particular care should be given to pending trade mark or design actions before the EUIPO.

The panellists, joined by industry members Bin Sun, Chief Legal Officer at Xiaomi, and Joost Van Ooijen, Director of Intellectual Property at AkzoNobel, proceeded to discuss the broader implications of Brexit for various industries. Striking a cautiously optimistic tone, the panellists agreed on the importance for rights holders to prepare for Brexit now.

The theme of the second panel of the day dovetailed nicely with the Brexit discussion. Seize the Day – customs & border control was moderated by Manon Rieger-Jansen, Bird & Bird, who set the stage by describing the ubiquitousness of counterfeits in 2019 and the global scope of the problem.

Matthew C Wagner, General Counsel PDC Brands, gave the US view. Matthew discussed the different ways US right holders can interact with the US Customs and Border Patrol in order to help the CPB detect, deter and disrupt counterfeiting. He emphasized how rights holders were not yet utilizing important tools like the CPB’s e-Recordation program for trade marks and copyrights enough. On a human level, getting to know your local CPB office and officers and educate them on counterfeits in your field also streamlines the process and enables rights holders to act quickly and forcefully against infringers. On the strategic level, the practice of defensive trademark registrations was also discussed.

The second speaker was Wolf Meier-Ewert, Counsellor IP Division at the WTO. Wolf talked about the WTO’s view of enforcement, based on the TRIPS Agreement. He discussed the current and past work of the TRIPS Council, including a description of pending consultations as well as other current measures being taken at the supranational level.

Turning from the supranational to the local, Jordi Güell, Güell IP, shared some customs enforcement tips and tricks from a Spanish private practice perspective. Jordi emphasized the need for lawyers to be responsive when a customs matters arises for a client, as well as proactive in the creation of product dossiers and other information to customs authorities in order to help them help you. He described the challenge of clients’ budget and time constraints in battling counterfeits and need for local representation in the jurisdictions where counterfeits pop up like daisies.

The best dressed panel of the day was unquestionably the IP in fashion: iconic products, influencers, greenwashing and design lifecycles lunch panel. Moderated by Karen Abraham, Head of IP at Shearn Delemore & Co, the panel discussed the challenges facing the legal function in an international environment with global supply chains.

James Sweeting, Head of Legal at Superdry Plc, pointed out the importance of integrating the legal function as early as possible in product development and to liaise with creatives in order to enable legal to not be viewed as always saying “no” but rather “yes, if…” He also emphasized the necessity of an all-encompassing IP approach in the fashion industry and exemplified it by the nano technology (not the Mork & Mindy one, but arguably equally futuristic) being used in the company’s Indian manufacturing plant.

Rory O’Hare, Senior Counsel at New Balance even mentioned blockchain technology being used by New Balance to trace and verify the authenticity of some severely limited edition sneakers (face it, you don’t understand young people anymore).

To the express delight of the assembled flock of IP lawyers (or is it a “conspiracy” of IP lawyers, as per Sir Robin Jacob’s keynote speech?), Catrin Turner, Head of Global IP at Dr Martens, emphasized the importance of external legal counsel input early on in the planning stages of product development, in order to follow the often tight deadlines imposed by the fashion market. She also mentioned the necessity of strategic thinking in choosing which IP rights to protect, timing issues, disclosure and registration and even trying to understand the driving force behind competitors or counterfeiters in order to proactively block such challenges with a firm steel capped boot."

The European Commission has today set out its principles for the political dialogue on intellectual property (and various other issues including the use of data) in the Brexit negotiations.

A copy of the paper is available here.  A detailed analysis of what this means will follow...