Global menu

Our global pages

Close

Education briefing - Brexit: the effects on Intellectual Property in the Education Sector

  • United Kingdom
  • Education - Briefings

02-07-2019

Why does Brexit matter to IP?

Organisations working within the education sector from universities, colleges, academies and online course content providers to examining bodies all have at the heart of their business intellectual property, whether this is copyright in course materials or patent rights in products developed by their research and development teams. It is therefore essential that the education sector response to Brexit considers the effect that Brexit will have on any intellectual property rights.

Significant areas of IP are harmonised across the European Union, such as trade marks, designs and patents and there are ongoing reforms to harmonise copyright. Due to harmonisation of IP rights many of these rights have become pan-European, registerable, licensable and enforceable across all 28 member states of the European Union.

Trade Marks and Registered Designs

Following exit day, the UK will no longer be an EU member state and the unitary European Union Trade Mark (EUTM) and Registered Community Design (RCD) will no longer automatically cover the UK, subject to any agreements to the contrary. The UK Government has recently updated its guidance on IP and Brexit. This provides that in the event of a ‘no deal’ Brexit;

• all existing registered EUTMs and RCDs will continue to be protected and enforceable in the UK by providing comparable rights in the UK; and

• all owners of pending EUTM and RCD applications will have a period of 9 months from the date of Brexit, to apply in the UK to obtain the same protections, retaining the date of the EU application for priority purposes. Owners will have to meet the cost of any such refiling.

These equivalent rights will involve “minimal administrative burden” for the owner and will exist as if they had been applied for and registered under UK law. The comparable rights will therefore be fully independent UK rights which can be challenged, assigned, licensed or renewed.

Unregistered Design Rights

UK unregistered designs rights (UDRs) last for 15 years from the date of creation of the design, or 10 years from the date of first sale of the design (whichever is earliest), and Community unregistered design rights (CUDRs) last for 3 years from the date of first sale or marketing of the design.

After Brexit existing CUDRs will continue to be valid in the remaining 27 member states and protection of existing CUDRs in the UK will be provided for with no action required by the right holder.

Subject to contrary agreement, the Government has confirmed:

• CUDRs already in existence on exit day will continue to be protected and enforceable in the UK for the remainder of their 3 year term; and

• owners of CUDRs disclosed after exit will benefit from a supplementary unregistered design right that will arise automatically which will protect and enforce that right within the UK.

Copyright

Copyright is likely to be the least affected area of intellectual property law because it is a territorial right and there is no registration regime in the UK or throughout the EU. Also, many copyright principles are enshrined in treaties that go far beyond the EU (e.g. the Berne Convention and the TRIPS Agreement). Where EU directives have been implemented, the principles have been adopted through UK legislation which we would expect to remain unchanged (unless repealed or amended by Parliament), except in circumstances when the rights derived from that legislation are contingent on continued EU membership.

A common criticism of copyright regulation within the creative sector and other content-rich organisations such as education institutions is the time and cost required to launch initiatives across the EU and beyond because of the lack of harmonisation of copyright law. Advice is often needed in a number of jurisdictions and any number of copyright licences may be required. The EU has sought to address this gradually, and on 15 April 2019 the Council of the European Union approved the EU Directive on Copyright in the Digital Single Market. The Directive aims to facilitate the harmonisation of copyright protection across each member state in relation to online content.

The most controversial parts of the Directive relate to a new press publishers’ right and strengthened rights of authors dealing with online content sharing service providers (AKA the ‘meme ban’). The Directive also looks to introduce exceptions in relation to text and data mining, together with use of works and other subject matter in digital and cross-border teaching activities. These are highly relevant to the education sector with the proposed aim of allowing researchers to benefit from a clearer legal space to use innovative text and data mining research tools, so that organisations will be able to take full advantage of digital technologies at all levels of education.

The UK now has 24 months from publication to transpose the Directive into UK law. Where the 24 month period expires before the UK leaves the EU, the UK will be required to implement the Directive. There is a risk that the UK may leave the EU prior to the end of the 24 month period and will no longer bound to implement the Directive. UK implementation of this Directive will be dictated by the current Brexit process but in the short term the Directive will still apply to the UK during any transition period. However Brexit means that the UK is no longer bound to implement future directives or follow decisions of the Court of Justice of the European Union (CJEU). Therefore increased divergence is likely, rather than the harmonisation craved by many in the education sector.

 Patents

The impact on substantive patent law is likely to be less significant because the current regime has been established largely as a matter of national law and international treaty, rather than the EU legal order. In particular, the European Patent Convention and role of the European Patent Office (EPO) in receiving and examining classic European patent applications will not be compromised by Brexit as the EPO is not an EU institution. The EPO creates a single patent group procedure such that once a patent is granted by the EPO it is converted into the respective national patents. Similarly, existing patents and pending patent applications (whether under the national route or EPO route) will be unaffected and will continue to be assessed as on the same basis following exit day.

Unified Patent Court

The same cannot be said for the Unified Patent Court (UPC). The UPC will authorise a pan-European patent right similar to the European Trade Mark whereby one application is used to grant protection in every member state. The target date for the UPC was December 2017 but this has been delayed by the failure of Germany to ratify and consequently the UPC has not yet entered into operation. The UK ratified the UPC in 2018, however even if the UPC enters into operation prior to exit day eligibility is currently subject to EU membership and it is unlikely that the UPC will apply post-Brexit.

Where the UPC does not apply, education institutions will not be able to take advantage of the reduced costs of (i) patent registration (one patent to cover the entire EU), (ii) litigation (as parallel litigation will not be avoided) and (iii) enhanced legal certainty (as UK courts will have the scope to interpret patent law differently to that of the UPC).

Of the few areas of UK patent law which come from the EU legal order, by far the most important is the supplementary protection certificate regime. A supplementary protection certificate (SPC) is a national intellectual property right (akin to a patent term extension). It provides an additional period of patent protection for patented pharmaceutical products and agrochemicals inventions and is available in each EU member state under two EU Regulations. SPCs are of great significance to Higher Education Research and Development teams operating in the life science and agrochemical sectors. Current government guidance states that the existing systems will remain in place, operating independently from the EU regime, with all the current conditions and requirements.

The UK Intellectual Property Office has clarified that SPC applications which are pending at exit date will continue to be assessed as normal, and will not need to be refiled.

Given the link between SPCs and marketing authorisations for medicinal products (or plant protection products), much will also depend on the new and transitional regime for such marketing authorisations. For example, marketing authorisations granted by the European Medicines Agency (EMA) via the centralized procedure currently take effect throughout the EEA. Unless the UK follows the EEA model for its new relationship with the EU, EMA decisions will no longer take effect in the UK.

Enforcement of IPRs

Choice of law will remain unaffected but jurisdiction of IP disputes will see substantial changes. On exit day, without a deal agreed to the contrary, EU regulations governing jurisdiction and enforcement of intellectual property rights are not applicable to the UK, certain countries may not recognise judgments from UK courts and there is potential for conflicting judgments between EU and UK courts.

There are international conventions such as the Hague Convention (recognition of jurisdiction between member states) and Lugano Convention (recognition of judgments) which may enable some continuity of enforcement between the UK and EU.

Hague Convention

The Hague Convention seeks to give effect to an exclusive choice of court in a state that is a contracting party of the Hague Convention. Current parties to the Hague Convention are the EU, Mexico, Singapore and Montenegro. The effect is that where there is an agreement with a choice of court clause the chosen court must hear the case and its judgment will be recognised and enforced in other contracting states. Therefore the Hague Convention could be significant post-Brexit to ensure that EU member states respect the jurisdiction of UK courts and judgments where contracting parties (i.e. UK and a EU member state) have designated exclusive jurisdiction to the courts of England and Wales.

The UK is currently a member of the Hague Convention by virtue of its status as an EU member state. The Hague Convention Depositary (the Ministry of Foreign Affairs of the Kingdom of the Netherlands, the Hague) released a statement on 12 April 2019 stating that the UK’s depository notification to ascend to the Hague Convention in its own right has been suspended until 1 November 2019. Meaning that, if the current Article 50 extension expires on 31 October 2019 the UK will become a member of the Hague Convention on 1 November 2019.

Lugano Convention

The Lugano Convention goes further than the Hague Convention and applies to jurisdiction and enforcement of judgments even where there is not an agreement in place with a choice of court clause. The Lugano Convention prescribes the basis on which the courts in member states have jurisdiction to hear disputes and provides for the largely automatic recognition and enforcement of judgments. It applies to jurisdiction and enforcement of judgments between EU member states and the European Free Trade Association countries (Iceland, Liechtenstein, Norway and Switzerland). Application of the Lugano Convention post-Brexit is not as simple as the Hague Convention. The UK Government has stated that post-Brexit it wishes to re-join the Lugano Convention in its own right. However this is dependent on the unanimous agreement of all other contracting parties (including the EU).

Continued application of the Hague Convention and Lugano Convention (if possible) will help to ease any initial divergence between the UK and EU legal systems. However further decisions of the CJEU will be non-binding in the UK and UK courts will no longer refer cases to the CJEU post-Brexit. This will no doubt lead to further divergence between the interpretation of intellectual property rights in the UK and EU.

So what does this mean for education establishments?

The UK Government has stated that in light of the current arrangements in place for the conduct of intellectual property rights post-Brexit, businesses may wish to seek legal advice on how such arrangements could affect their business model or intellectual property rights. We recommend that education institutions conduct an IP audit in order to better protect existing intellectual property rights by having a concrete understanding of what pan-European rights, national rights, and unregistered rights the institution currently owns. Health checks should also be completed for existing IP contracts, focussing on clauses such as exclusivity, compliance with law, change of law and agents for service amongst others. Brexit proofing contractual arrangements will enable education institutions to best protect themselves on exit day…whenever that may be.

Brexit Proofing Actions

• Health check existing IP contracts

• IP Audit

• Consider amending key contractual clauses/positions that could be affected by Brexit

For more information contact

< Go back

Print Friendly and PDF
Subscribe to e-briefings