1. Brexit and IP – UK observations
Ian Karet April 2019

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

3. 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

4. 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

5. 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

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

7. 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

8. 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