05 December 2016

The ultimate Brexit intellectual property tip list


Richard Penfold
Partner | UK

It’s highly likely that Brexit will affect the value of many UK businesses’ Intellectual Property Rights (IPR) portfolios.

The Ultimate Brexit Intellectual Property Tip List

1. Take a look at the extent to which your business relies on pan-EU IP rights. It’s important to consider EU rights such as EU trademarks and registered and unregistered community designs. Are these protected in the UK?
2. Make a list of key rights which your business relies on with your IPR Attorney. Specifically, highlight any rights without separate national protection.
3. Check IP terms and IP licences. Take a close look at territory provisions to address any potential gaps and amendments that may be required.
4. Take a look at the budget you might need to set aside to cover any additional legal for required changes.
5. Review current agreements and amend any agreements that require a change to definitions. This includes licences that define a territory as including the EU. Be sure that the EU scope is defined as including the United Kingdom.
6. Take a look at agreements that include EU member states. Definitions should state specifically whether they will continue to apply to countries that leave the EU after the agreement is entered into.
7. Flag any competition law provisions. These may be contingent on changes to the law.
8. If relevant, proprietors of rights that are re-registered in the UK should ensure that these are put to genuine use so that they do not become vulnerable to revocation.
9. Patent holders should take consideration of Brexit related updates affecting their inclusion in the Unitary Patent system. If granting or receiving a licence, there must be clear provisions indicating which parties have the right to enforce the patent under future regimes.
10. If an .eu domain name is being used and relied on, a back-up domain should be acquired as ownership of an .eu domain requires a corresponding business address within the EU. Upon Brexit, UK holders may lose their right to retain these domains.

Richard Penfold Partner | London

Category: Blog

Client types: Technology, Biotech