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16 April 2018

More stumbling blocks for the UPC

In March, the UK and EU agreed that owners of EU trademarks, Community designs, plant variety rights and database rights will have their rights protected in the UK after a transition period which is due to end on December 31, 2020.

While the draft is a significant step forward, Brexit still raises concerns.

Negotiations continue for the protection of geographical indications and pending applications for supplementary protection certificates post-Brexit.

There’s also uncertainty over the mechanics of the UK ‘comparable’ right—there’s no agreement that the “cloning” will be at no cost and with no forms required, explains Kate O’Rourke, president of the Chartered Institute of Trade Mark Attorneys and senior counsel at Charles Russell Speechlys.

She adds that the ability of UK chartered trademark attorneys to represent clients before the European Union Intellectual Property Office will need to be ironed out.

Further discussions are required to decide if the UK should adopt a regional, a national or an international regime for exhaustion of rights post-Brexit.

“This will likely depend on whether we join a customs union with the EU, which would also assist with avoiding a hard border for the movement of goods across the Irish border,” she says.

O’Rourke concludes: “We are reminded that ‘nothing is agreed until everything is agreed’ so there are still many unknowns, but we hope for more clarity over the next few weeks.”

Deadlines and commitments

Another unanswered question is whether the Unified Patent Court (UPC) and unitary patent will ever be implemented. Brexit is one of the main hurdles that could prove a stumbling block, while the other obstacle stems from Germany.

Germany’s Constitutional Court (Bundesverfassungsgericht, BVerfG) has scheduled to hear a constitutional complaint over the UPC that questioned the democratic accountability of the regulatory powers overseeing the UPC’s operation and the independence of the judiciary.

“It’s a valid question to ask about how legally to integrate this system into the national landscape, although this is not always in vogue in the European legal picture,” says Jan Krauss, patent attorney at Boehmert & Boehmert speaking in a personal capacity.

If the BVerfG finds in favour of the complainant, Germany would be unable to ratify the agreement, which means it’s “back to the drafting table”.

Germany’s decision may also have consequences on the UPC in a different way, as the court may send questions to the Court of Justice of the European Union (CJEU).

“This will delay proceedings further and may push the overall proceedings over the ‘Brexit cliff’,” warns Krauss.

“Politically, no UPC means one item less to struggle with during Brexit. Patents are complicated and politically not sexy,” he notes. “I bet that most people here say that the German system has worked very well so far, so why stir up the mud now?”

Further drama

In another potential blow to the UPC, far-right political party Alternative for Germany (AfD) called for the re-debate and repeal of UPC laws. On March 15, German parliament debated the motion.

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