1. The impact of Brexit on intellectual property Catriona Hammer CIPA

2. Introduction Business as usual: Existing UK national IP rights unaffected European patents and applications unaffected Article 50 unlikely to be triggered before year end UK is set to remain in the EU until at least 2019

3. Patents Business as usual: The European Patent Convention (EPC) and the European Patent Office (EPO) are not EU institutions. UK patent attorneys who are qualified EPAs will still be able to represent clients before the EPO. European patent applications and granted patents unaffected. UK patent attorneys will still be able to prosecute Patent Co-operation Treaty (PCT) patent applications. PCT patent applications unaffected UK patents granted by the UK Intellectual Property Office (UKIPO) are unaffected

4. Trade marks and designs UK trade marks and design rights unaffected. CIPA and the Institute of Trade Mark Attorneys (ITMA) are working together to ensure that holders of EU trade marks and design rights will not lose protection CIPA, ITMA and the UK Government are working together to ensure that UK trade mark attorneys will continue to act before the EU IPO Mechanism for transferring UK rights under EU Trade Mark and Community design applications into UK national applications unclear. CIPA and ITMA lobbying to minimise cost and resource burden to business while maximising legal certainty UK will remain a member of the Paris Convention and the Madrid Agreement after Brexit. CIPA expects that the UK will continue to recognize the priority filing dates of Madrid and/or EU trade marks CIPA expects that a transitional “non-use” period will be negotiated as part of the process for EU marks that were only used in the UK (that remain EU trade marks) and for new UK marks that were never used in the UK, prior to the effective date of Brexit. The mechanism for achieving this remains unclear but we will work with the UKIPO and other stakeholders to achieve the optimum outcome Consider reviewing all licence/settlement/delimitation/co-existence agreements relating to EU trademark and design registrations. There may be an impact from transitional provisions and interpretation may be a matter of contract law rather than IP law. All existing EU unregistered design rights and Hague registrations will continue, unaffected, until Brexit. We expect the UK to enact the necessary legislation to ensure rights holders do not lose protection upon Brexit and will work with the UKIPO and other stakeholders to optimise the likelihood of this happening.

5. Trade secrets and data safety Business as usual: No change for the holders of trade secrets. UK exceeds standards specified by the EU Trade Secrets Directive. No need for the UK to implement the directive and there may be advantages in terms of greater legal certainty from not implementing it. Cyber security strategy in place since 2011 and regularly updated. Formal data protection measures in place since 1988.

6. IP rights covered by EU Regulation (supplementary protection certificates, copyright and regulatory data protection) Constitutional experts believe that most EU law will be re-enacted en masse by UK Regulation. CIPA will press the Government for action including: Supplementary protection certificates o CIPA anticipates that pending and existing SPCs will be unaffected (see above). o Marketing Authorisation (MA) on which the time period of the SPC is based currently the first MA in the EEA. Could potentially become the first UK MA. It is possible that the UK might enact SPC rights after Brexit that are more favourable to innovator companies. The European Commission intends to study the effects of a SPC based on a Unitary Patent. The results of this study could influence UK policy as the UK is likely to still be a member of the EU when they are published. Regulatory data protection o RDP by the UK Medicines Act based on various EU Directives and Regulations. We expect that the UK will provide RDP at least at existing level. Major issue whether commences from the date of the first MA in the EU or the first MA in the UK. Copyright o We anticipate that UK will protect copyright (including existing copyrights) in accordance with the Berne Convention as a minimum. There may be an opportunity to review copyright protection.

7. IP disputes Business as usual: The UK has a sophisticated and highly successful litigation system, including the innovative and affordable Intellectual Property Enterprise Court (IPEC). UK court system will continue to provide a fair and balanced system for litigation post-Brexit. Alternative dispute resolution methods are well respected and recognised in the UK. The UK has a well- developed arbitration system and London is often chosen as the seat of international arbitration. The UK is a signatory of a number of international conventions in relation to choice of forum and recognition of judgements and conflict of laws (for example the Hague Conventions). All IP professionals in the UK enjoy a high level of legal professional privilege, which allows clients to be completely open with their legal advisors.

8. The Unitary Patent and Unified Patent Court The Unified Patent Court Agreement has not yet been ratified by sufficient countries for the system to come into effect. In particular, Germany and the UK need to ratify. CIPA has a strong preference for the UK to participate in the UP and UPC system, if a solid legal basis for this can be agreed. The UK government, assisted by CIPA and other national stakeholders, has worked tirelessly over many years to create a system favourable to the UK and business which should simplify the patent system for businesses and reduce their costs. Plans were well advanced for part of the Court’s central division to open in London, with Aldgate Tower in Whitechapel secured as the venue. CIPA is working with other interested parties, including international colleagues, to optimise the chances of the UK’s continued participation.

9. IP transactions Business as usual: The UK continues to be a good venue for IP transactional work, with highly qualified, skilled and experienced legal professionals. The law of England and Wales will continue to be a favourable governing law for IP transactional agreements. The UK has an enviable track record in technology transfer. The highly successful Lambert Toolkit of templates helps to facilitate agreements between UK universities and business. These templates are currently being updated.

10. Parallel imports and exhaustion of rights The position may change following a Brexit depending on the precise arrangement reached. This is a complex area and CIPA is working with stakeholders to achieve the optimum position. There is a possibility that a Brexit could enable a more advantageous regime for rights holders.

11. IP tax relief Business as usual: There will be no change for companies claiming UK corporation tax relief via the Patent Box scheme on the profits they make from patented inventions. The opportunity should exist for discussions between the UK Government and stakeholders to make the system more attractive for those investing in the UK.

12. Conclusion Business as usual CIPA and ITMA members ready and able to represent Chinese clients We look forward to working with you

13. Recent Developments in UK and European Patent Law Gwilym Roberts CIPA Council Member Co-Chairman of CIPA Patents Committee Chairman of Kilburn & Strode LLP

14. Contents 1.Case Law Developments 2.Developments in practice before the UK Patent Office 3.Developments in practice before the European Patent Office

15. Case Law Developments Whilst there are many decisions currently coming out of the Courts, they are more interesting factually with no important trends emerging – we seem to have a good stable legal system both in the UK Courts and at the EPO Interesting debate between High Court and Intellectual Property Enterprise Court (IPEC) Success of IPEC UK High Court currently extremely effective

16. Developments before the UK Patent Office (IPO) Overview IPO has a high reputation as a quality and customer friendly organisation Pendency typically four to five years, but strong acceleration options available where required Considered to be attractive for life sciences, less positive for software related inventions than EPO (but still good)

17. IPO continued… Multiple recent practical changes introduced Clarification of deadline for filing divisional applications Notification of intention to grant Clarification of reinstatement provisions Prohibition of “omnibus claims” Allows shaded drawings and black and white photographs Continuing Examiner hiring efforts to deal with backlog Good value, good quality filing option

18. Developments before the European Patent Office “Early certainty from opposition” New procedure from 1 st July Expected to reduce “straightforward” cases to 15 months filing-to-hearing Extensions to counter statement period only granted exceptionally Considered to be a “UPC-buster” “Early certainty from search” 14% productivity increase in 2015 “Early certainty for examination” Grant to be concluded within 12 months of first examination report 50% refund where application withdrawn after examination starts (but before first response is filed) Acceleration options remain strong

19. EPO changes continued… Continued dialogue on other increases in efficiency Proposed changes to Auxiliary Requests withdrawn Discussion of information communication with Examiners Discussion of first phone call with Examiner Nothing decided yet The price of efficiency…

20. Conclusion UK and EPO patent systems working effectively Both addressing efficiency in different ways Users can get quick protection if they wish providing a tailored pendency

21. PRACTICAL ISSUES IN PATENTS Peter D Garratt MA CPA EPA

22. Key IP Issues Success in China is no guarantee of risk-free export There are different cultures in China and the UK regarding patent scope Risks of injunction; border seizures and substantial awards of damage, are currently much greater outside China

23. No guarantee of risk-free export Many overseas enterprises were late in recognising importance of patents in China Most Chinese enterprises have not yet acquired their own IP portfolios for negotiation or counter attack Greater IP familiarity within home territory

24. Broad patent scope UK patent attorneys have a culture and tested expertise in securing patents with broad scope UK (and European) courts are willing to find infringement in competitors' products which look very different Many Chinese enterprises do not value (and will therefore not pay for) patents of broad scope

25. Risk management strategies Shorter term Appropriate product by product clearance Pass risk to importers, distributors, partners Consider strategic acquisition of IP

26. Risk management strategies Longer term Install an IP-aware culture Integrate clearance with product development Develop IP portfolios for offence and defence

27. Risk management / clearance Absolute clearance close to impossible and very expensive even to approach Match expenditure to risk factors Spend minimum to bring IP into line with other business risks

28. Risk factors Learning from competitor Large investment Difficult to alter product Mature technology Short product life cycle Ability to pass risk to others

29. Risk management processes Information gathering Search work & analysis of search results Risk management

30. Information gathering Determine risk level, using risk factors Agree/document risk level with enterprise Define product Include planned developments Claim-like definition often helpful

31. Search work for lower risk Search only high risk names Major competitors Anyone your designers may have learnt from Standards or interfaces you need to confirm to Narrow or no subject matter searches

32. Search work for higher risk Build on name searches by citation analysis Broad subject matter searches Designs Name searches Classification searches Unregistered design rights

33. Analysis Initial analysis by in-house IP staff Check in-force; patent pool or FRAND Outside counsel (informal at first; written opinions where appropriate)

34. Risk management categories “ Not infringed ” “ Not valid” “Further investigation” Redesign where commercially appropriate Targeted search work to invalidate Acquire/licence patent Take measured risk – consider contingency

35. Integrate in product development First look for prior patents before development Highlight risks early Make use of technology in public domain Second look after preliminary product specification May suggest easy design modifications Protect own IP wherever appropriate Full risk management after final product specification

36. Acquire IP rights Build your own IP portfolio Based around your own products Broad scope to cut off routes for competitors Strategic factors Acquisition of IP from others Remove identified risks Possibly targeted at owners of threatening IP Defensive patent aggregators

37. Patent portfolios Build your own IP portfolio Based around your own products Broad scope to cut off routes for competitors Strategic factors Acquisition of IP from others Remove identified risks Possibly targeted at owners of threatening IP Defensive patent aggregators

38. Summary Entering export markets without IP investigation can carry significant risk Prior knowledge of IP issues offers alternative solutions Long term strategies can reduce risks (and offer opportunities)

39. THANK YOU Any questions?