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Bill Gornall-King
Bill Gornall-King,
PARTNER
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Intellectual Property rights (Part II)
12 November 2020

We have previously written a piece regarding the impact of UK’s departure from the EU on Trademarks, Design Rights and Domain names; here we are looking at Patents and Supplementary Protection certificates on the one hand and Copyright, sui generis database right on the other.

Patents

At first glance, there will be no change to present arrangements once the Transition Period ends on 31 December 2020 as the current two systems will continue to operate: the national registration system operated by the UK Intellectual Property Office and the European system (which is not an EU system even though it is based in Munich, Germany). For many years the member states of the EU have sought to create an EU unitary patent system and a Unified Patent Court. Having ratified the Agreement in 2013 the UK has withdrawn its ratification so should that system be implemented (and there are other difficulties surrounding its ratification/implementation by other EU member states) the UK will be outside it.

So this means no steps need to be taken by patent holders in readiness for the end of the Transition Period.

It is, though, worth bearing in mind that no agreement has yet been reached between the UK and EU in relation to the so-called Recast Brussels Regulation which may give rise to issues surrounding service of proceedings and enforcement of judgments in EU member states.

Supplementary Protection Certificates

SPCs are used to extend patent terms for some pharmaceutical and plant protection products and are intended to compensate for the time taken to obtain marketing authorisations. Again these are national rights, so the end of the Transition Period will not impact existing or pending SPCs in the UK.

As they are originally a creature of EU law as from 1 January 2021 new applications in the UK will have to be based on a UK Marketing Authorisation; otherwise no steps need be taken to prepare for the end of the Transition Period.

Copyright

Copyright is a national right governed primarily by the Copyright Designs & Patents Act 1988 framed to give continuing effect to the longstanding Berne Convention and International Copyright Conventions. Automatic protection arises upon creation of a copyright work if it is a ‘qualifying work’ (based on the author’s domicile or place of first publication as appropriate). Since 1989 there has been much harmonisation of copyright laws across the EU member states and the law has evolved through national and CJEU decisions. Notwithstanding the end of the Transition Period nothing will change immediately because of the basic protections of the international treaties in place that also bind EU member states.

However, the Government has made it clear that it will not implement the new 2019 EU Directive on Copyright in the Digital Single Market due to be implemented in EU member states by 7 June 2021.

Where there may be an impact is the regime across the EU by virtue of the Portability Regulation 2017 that allows consumers across the EU (and EEA) to access online content services to which they have subscribed, from anywhere in the EU where they happen to access the content. This will be dependent on commercial agreements going forward from 1 January 2021, so travellers may well be affected.

Database Right

This is another creature of EU legislation, introduced in the nineties to give ‘sui generis’ protection to databases created in the EU involving substantial investment in their creation and content. At the end of the Transition period, for existing databases they will continue to be protected as a national right in the UK and the UK will recognise the rights arising in respect of databases in EU members states but as yet it is unclear whether there will be reciprocity or whether UK Nationals will only be able to rely on copyright enforcement of their databases in the EEA after 1 January 2021.

Consistent with our policy when giving comment and advice on a non-specific basis, we cannot assume legal responsibility for the accuracy of any particular statement. In the case of specific problems we recommend that professional advice be sought.

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