Brexit and IP – UK observations Ian Karet April 2019

Sources of IP Law International Conventions – TRIPs, Paris, EPC EU Law National Law – statute and common law Harmonisation in IP law UPC

Governing Law Applicable law (including efficacy of the parties’ choice) – EU Regulation 593/2008 (“Rome I”) and EU Regulation 864/2007 (“Rome II”) Rome Convention and Rome I – Contract – party choice governs Rome II – Non-contractual claims Under Withdrawal Agreement Rome I and II continue to apply If No Deal UK Act will incorporate them into UK law; EU states bound to continue to apply them - so little change

Jurisdiction & Enforcement EU Regulation 1215/2012 (Brussels I Recast - EU Member States) and the Lugano Convention 2007 (EU Member States and Switzerland, Norway and Iceland) Comprehensive set of jurisdictional rules (including rules giving effect to jurisdiction clauses in favour of states party to said instruments) Provisions on the recognition and enforcement of judgments as between the states party to them Civil Jurisdiction and Judgments (Amendment) (EU Exit) Regulations 2019 would revoke both the Brussels I Recast and Lugano No Deal – revert to common law position. Service is critical to jurisdiction Service out gateways will now be different

Jurisdiction & Enforcement – cont. Increased use of ‘agent for service’ Hague Choice of Court Convention EU Member States, Mexico, Singapore and Montenegro will continue to be effective EU Regulations 1393/2007 (Service Regulation), 1206/2001 (Evidence Regulation) will go. But Hague Service Convention and the Hague Taking of Evidence Convention –pre-existing multi-lateral (i.e. not just within the EU) conventions will stay Enforcement will likely require the commencement of a new action in the UK

IP Issues Multi-state claims Allocation of jurisdiction to courts of registration under Art 24(4) Brussels recast Torpedoes Anti-Suit injunctions

Exhaustion of rights Within EEA products protected by IPR placed on the market in one Member State by the proprietor or with consent may then move freely Following Brexit UK IPR holders could block unauthorised imports from EEA and vice versa Art 61 Withdrawal Agreement says that any rights exhausted by end of transition period remain exhausted In No Deal, UK plans to continue, unilaterally, to recognise EEA exhaustion in the immediate term But no news from the EU the other way Non EEA countries remain an unknown

Free movement of people No Deal means no protections either way Withdrawal Agreement allows free movement for its duration Political Declaration provides for non-discrimination and reciprocity