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21 December 2016Copyright

Preparing for Brexit: 5 tips from WIPR Leaders 2017

With the UK government vowing to trigger the Brexit process by March 2017, IP owners should be considering several coping strategies now. Five nominees from the WIPR Leaders 2017 publication have provided tips on what to consider over the coming months.

Belt and braces

Jane Wainwright, partner at UK-based law firm Potter Clarkson, says: “While the UK will still be covered by a European patent irrespective of EU exit, for a ‘belt and braces’ future-proofing approach, they could consider filing parallel UK national patent applications as part of their filing strategy to ensure they cover the UK, no matter what happens in the next 20 years.

“The short-term upside to this is that patent grant can typically be achieved much more quickly in the UK than at the European Patent Office, and having a granted patent in a major territory can have commercial benefits,” she adds.

Looking at licences

According to Daniel Hoppe, partner at German-based law firm Harte-Bavendamm: “As no-one knows whether the UK will ultimately take one route or the other, patent owners should start to revise not only the definition parts in their licence agreements (in particular the definitions of territories), but also ensure that the most important substantive consequences of the UK’s exit are dealt with, in particular the possible exit from the single market.

“They must also be aware that the UK’s exit from the market may impact the sourcing of products, and sourcing agreements should therefore be revised in light of this. In particular, there is no guarantee that products legally sourced in the EU may be marketed in the UK, and vice versa,” he adds.

To opt out or not

Emmanuel Gougé, partner in Pinsent Mason’s Paris office, says the Brexit implementation will have no impact on European patents, “since this European right is based on the European Patent Convention, which is an international treaty, independent of the EU and the EU law”.

But, he adds, patent owners should consider whether or not to opt out their patents from the Unified Patent Court (UPC) system, which could come into effect next year.

The opt-out allows owners of a ‘classic’ European patent (granted or still pending) to remove their patent from the jurisdiction of the UPC during a seven-year transitional period.

“In case of co-ownership, all co-owners have to file the opt-out application. It is therefore advisable to provide for the opt-out procedure in future assignment contracts and also to modify the already signed assignment contracts whose effects should last after the entry into force of the UPC,” says Gougé.

Keep calm and carry on

Simon Clark, partner at law firm Berwin Leighton Paisner, explains that while it is never too soon for trademark owners to review their portfolios, and Brexit is a very good reason to do so, “I would caution against their taking any immediate action and incurring unnecessary costs now, unless their particular portfolio justifies it”.

He adds: “It is simply too soon to know how the government and the European Union Intellectual Property Office are going to deal with the conversions, and even after article 50 is invoked, there will be plenty of time to fully consider all the options once the position has become clearer. The key period is likely to be the 12 months leading up to the actual Brexit.”

The view from the US

According to MaryAnne Armstrong, partner at Birch Stewart Kolasch & Birch, one of the big concerns for US companies operating in the life sciences/pharmaceutical industry relates to the regulatory impact of Brexit.

“Market authorisation (MA) in the UK is currently handled by the European Medicines Agency (EMA), which is located in London. A US company interested in the EU as a market can obtain a single MA through the EMA that covers the entire EU market. With the UK leaving the EU, separate approval will be needed for the UK.

“A similar impact will be felt with regard to clinical trials, where there is currently a framework being implemented for a single application for clinical trials in the EU. Upon the exit of the UK, pharma companies will not be able to use the single application portal for clinical trials in the UK, leading to further increased costs and administration,” she adds.

For more information about the WIPR Leaders publication, please click here .

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Copyright
3 October 2016   Yesterday, October 2, British Prime Minister Theresa May revealed that article 50 will be triggered by the end of March 2017, setting in motion the Brexit negotiation process.
Patents
28 November 2016   The UK government has given the go-ahead to the Unified Patent Court (UPC) Agreement, in a move that could signal the direction of Brexit.