Licences and Other IP Agreements
There are many uncertainties in respect of IP rights governed by EU legislation (EUTMs, RCDs, Unregistered EU Design Rights, CPVRs, Data Base Rights, Geographical indicators of origin, etc.). Also we do not know what will happen with respect to the UK and EU competition law. In addition, although not strictly an IP-related issue, the future involvement of the UK in EU-funded research projects is very uncertain and this uncertainty may affect your IP Agreements.
From an IP view point, existing agreements should be reviewed to check, for example:
- whether rights based on EU legalisation (such as EUTMs, CPVRs and RCDs) are involved and if so whether the parties to the agreement need to discuss re-negotiation once the UK’s terms of exit are known or to agree some contingency provisions, for example that the rights’ owner will take all necessary action or reasonable steps to ensure that UK rights are preserved or whether the UK rights could be sacrificed or excluded in return for a reduction in royalties?
- whether any Patent provisions will be affected by the UPC if it comes into force and if so whether the parties to the agreement need to agree now who decides, and on what conditions* the Patentee will opt out of the UPC any particular Patent or Patents, and any knock-on effect on royalty and enforcement provisions in the agreement?
*For example: whether the UK is in or out of the UPC, the particular Patent and commercial circumstances, and bearing in mind that it is not possible to opt-out where an action is already pending before the UPC and that it is possible to change your mind once (e.g. to opt back in having opted out).
The above considerations also apply to agreements being drafted now and to future agreements. For the present, until matters become clearer, it may also be worth considering including a break clause contingent on the UK leaving the EU, if the likely scenarios after Brexit are not sufficiently clear that contingency clauses covering all likely scenarios can be included.
Whilst Brexit is being negotiated, the drafting and interpretation of licences and other IP agreements need careful consideration