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EU Brexit paper on IP offers welcome news on supplementary protection certificates, says expert

Out-Law News | 11 Sep 2017 | 11:04 am | 2 min. read

Drugs manufacturers will welcome new proposals on how applications for supplementary protection certificates (SPCs) in the UK submitted prior to, but not processed until after, Brexit, should be handled, an intellectual property (IP) law expert has said.

The proposals, outlined by the European Commission, would provide continuity to existing arrangements, if they are accepted, Charlotte Weekes of Pinsent Masons, the law firm behind Out-Law.com, said.

The Commission said: "After the withdrawal date, a person should continue to be entitled to obtain in the United Kingdom a supplementary protection certificate or an extension of the duration of a supplementary protection certificate (so-called paediatric extensions) where such person had submitted before the withdrawal date an application for a supplementary protection certificate or an extension of its duration before a United Kingdom authority in accordance with Union law and the administrative procedure for the grant of the certificate concerned or its extension is still on-going on the withdrawal date."

"Any certificate so granted or extended should provide for protection equivalent to that provided for by Union law," it said.

The Commission's proposals were contained in a new position paper on intellectual property (IP) rights that it has set out as part of ongoing negotiations with the UK over the terms of the UK's exit from the EU.

Weekes said: "The proposals should provide reassurance to patentees that the procedure for obtaining certificates within the UK seems unlikely to change in the short term.  In addition, any applications pending at the time of withdrawal will result in sufficient equivalent protection to that which they would have had before Brexit."

SPCs serve to extend the life of a patent by up to a maximum of five years in the field of medicinal products. SPCs are provided for under an EU Regulation which is directly applicable across the whole of the EU, although they have to be applied for separately in each EU country.

The rationale for SPCs is to compensate patent holders for the period of patent protection during which they are prevented from commercialising their products owing to the lengthy drug approval process. Patent protection lasts 20 years but it often takes drugs companies around a decade to develop new medicines and gain marketing authorisation.

The paper (5-page / 432KB PDF) published by the Commission also addressed other issues.

The Commission said that businesses granted an "intellectual property right having unitary character" within the EU prior to Brexit should continue to be able to enforce those rights in the UK after the date on which the UK exits the EU.

Those rights could therefore extend to EU trade marks, and EU registered design rights, as well as, potentially, new unitary patents if applications for those begin to be submitted and granted prior to Brexit.

The UK should introduce "specific domestic legislation" to provide for the post-Brexit continuation of those rights if required, the Commission said. Businesses should not be required to pay for continuation of their rights in the UK, it said.

Under the approach advocated by the Commission, the UK should recognise existing renewal dates for rights, and also honour "priority and seniority principles".

The Commission also said the UK should also adapt rules concerning the 'genuine use' of IP rights, such as trade marks, as well as rules concerning reputation obtained by holders of IP, "to the specific situation under consideration".

Where applications for intellectual property rights having unitary character are made prior to Brexit but not determined by the point the UK leaves the EU, businesses applying for those rights "should be entitled to keep the benefit of any priority date in respect of such pending application when applying after the withdrawal date for an equivalent intellectual property right in the United Kingdom", the Commission said.

The Commission also said database rights acquired prior to Brexit should continue to be mutually recognised in the UK and remainder of the EU post-Brexit.