“Problems with IP protection are usually a subject of choice for IP professionals”, says Marek Bury, an IP specialist in Poland. With technology quickly advancing, Marek speaks on how Poland is adapting to such change.

“That is what we find interesting. Our reports often look pessimistic. It should be stressed that obtaining and enforcement of patents in Poland is possible, even if not easy, and that wealth and market generated by a population of 38 million citizens have a potential for providing generous compensation for IP inconveniences.”

With automation and robotics quickly advancing, how would you advise those involved to change their game regarding patenting their invention?

Our world is getting more and more digital. At the time patent systems were designed, technical problems used to be solved with “iron, coal and heavy machinery”. Nowadays, solutions to technical problems tend to mainly consist in finding a way of controlling hardware and programming it. Therefore, inventions migrate away from mechanical machinery and analogue electronics towards digital electronics and computer implemented inventions. This phenomenon complicates prosecution and enforcement of patents because legal regulations and practices are not harmonized between various countries. Even in Europe some jurisdictions apply very different approaches towards computer implemented inventions than European Patent Office. Effect of European patents can be invalidated in contracting states and respective authorities are not compelled to interpret the regulations of European Patent Convention according to EPO case law and guidelines. The Polish Patent Office is one of such authorities. It is responsible for all patent invalidation actions in Poland and its examiners quite openly declare that computer implemented inventions are, in their opinion, not technical and hence not patentable.

Have there been any recent regulatory developments in Poland to affect your work with patents? Are there plans in this respect?

A main legal act covering patents in Poland, the Industrial Property Law, has recently been subjected to rather frequent amendments, thrice in 2015. One of the amendments addressed directly issues related to computer implemented inventions and modern electronics. A requirement has been laid down (art. 33.3) to draft method claims using features concerning technical processing of matter. This requirement intentionally excludes all compressing and encoding methods. On the other hand, implementing rules laid down in Regulation of the Prime Minister on filing and processing of patent and utility model applications, were amended in a manner making the process of rejecting computer implemented inventions more laborious for patent examiners. Nevertheless, all these changes have had rather limited impact on the practice of the Polish Patent Office according to which software exclusion is interpreted much more broadly than in the European Patent Office (EPO).

What filing scheme can be recommended to obtain a valuable protection on (radio) electronic, or computer implemented inventions in Poland?

The most reliable path to patent protection on computer implemented inventions, encoding/decoding methods, signal and image processing methods, digital modulation schemes in Poland, still leads through the EPO - exactly as designed in the European Patent Convention (EPC) having patent granted by the EPO and then validated. However, Poland adopted the provision of the EPC which contributes to the significant effort required to have the effect of granted European Patent valid. Whole patent specification needs to be translated and in case it defines narrower scope of protection, it is the Polish text which is supposed to be applied. Otherwise, quality of translation does not seem to matter much – theoretically. In practice, the claims must be well translated as the scope of protection defined by poorly translated claims can be argued to be null. On the other hand, description can be used to interpret claims in infringement procedures. Although translations can be corrected, changes are effective only after the Polish Patent Office publishes corrected text and this can take a while. Moreover, the infringement cases are still handled by common courts. Judges are not yet very well versed in intellectual property, and hence, they are pretty susceptible to argumentation based on good/bad faith and general honesty. Amendments to the documents defining scope of protection during prosecution are not working to the advantage of the party which makes them. In a view of the above implementation of specialised Intellectual Property Courts in Poland is a change very much longed for. But for the time being it is crucial to have translation texts verified by someone working with patents professionally.

Another risk factor is the possibility of invalidating the effect of the European Patent in Poland in nullity proceedings before the Polish Patent Office (PPO). The PPO does not consider itself bound by the EPO case law or guidelines and is willing to use own interpretation of EPC articles. Therefore, a risk that subject matter of granted European Patent may be found non-technical and hence not patentable by the PPO in the nullity proceedings is not negligible. The risk can be reduced if there are given hints or embodiments showing that the invention as defined in claims can not only be implemented digitally, but also in analogue electronics.

Marek Bury

Managing Partner

www.bnb-ip.eu

Marek Bury deals mainly with the cases concerning patents, particularly in the field of electrotechnics, mechanics, telecommunication and information technology. He is an author and co-author of approximately 30 scientific publications concerning radio electronics and 5 works concerning industrial property. He provides advice regarding optimal IP protection and assistance in patent and UM drafting, prosecution and litigation as well as invalidation of inaccurately granted patents and rights under utility designs.

Bury & Bury have been patent attorneys for generations. In our work, we put strong emphasis on sound technical knowledge and engineering education. We take care to be well-versed not only in the procedural nuances of the industrial property law, but also in how entrepreneurs can use the industrial property and how it can be translated into their profit. As a result, we can understand the needs of our clients and advise them well.

Maggie Ramage’s role in the IP team at Edwin Coe is to support and work in the trade mark registration practice.

“On a daily basis I deal with trade mark clearance, protection, defence, litigation, renewals and any area relating to trade mark protection worldwide.

“I work closely with WIPO, the EUIPO and the UK IPO, and I also handle design protection.”

The world of trademarks varies from day to day: “It is always interesting (and fun) to see what new issues arise each day. I never know what will come up, or from what country”, explains Maggie.

She discusses how the US and UK differ in relation to trademarking, and how the industry has changed over the years.

How would you describe the EU’s progress in Trademark and IP law over the past decade? What was the biggest turning point?

There have been some big changes in trade mark practice over the years, most of which have happened over the last 10 years. There have been improvements in dealing with customs issues and more recently attention has been turned to the cost of protection, which means that it is more cost effective to file in the areas of interest in the EU, not just adding trade mark classes (as used to be the case); previously it was possible to protect three classes for the price of one, which I think most trade mark applicants tended to do whether they had interest in the extra classes or not. This led to clutter on the register, and more uncertainty and cost for trade mark owners, who would have difficulty in clearing marks for use and registration in 28 states, only to have to face expensive litigation against prior marks, where use of those marks in the relevant fields was questionable.

What is next on the agenda for European trademark law and the development of protection for beauty care specialists, financial institutes and mobile telecom providers?

There are some big changes in procedure just introduced in the EU, starting from 1 October 2017. For example, there is abolition of the graphic representation for a mark. This has now been replaced by a requirement for “clarify and precision” as to what is protected. This should help in protection of more non-traditional marks, such as sounds or smells, many of which have failed previously as it was not easy to define the mark being applied for graphically, so it could be easily understood or easily searched. The types of marks now agreed could include not only the word or logo or shape of a mark but also the position of a mark, the pattern, colour, sound, motion, multi-media or holograms. This reflects multi-media ways of disseminating information and brings the system into the 21^st century.

Certification marks are now allowable – these indicate that goods and services possess certain characteristics, rather than their trade mark origin (which is the normal basis of trade mark protection, i.e. being a sign of origin of a particular product or service from a particular source). An example of this in the UK is the certification mark for Harris Tweed. It will be interesting to see the take-up of this in the EU. The UK has used this method of protection for years, but some EU member states are not familiar with the concept of certification marks. Regulations will need to be produced governing use of the particular mark.

There are also a large number of procedural changes just commenced, such as the method of corresponding with the EU – there is more on-line correspondence, e-filing of cancellation or invalidity proceedings.

The biggest thing on the horizon in Europe will of course be Brexit. We believe that existing EU protection of marks at the EUIPO will be extended to the UK, but the question is how this is done. Automatic extension of rights is favoured., however also under discussion has been opting in to UK protection by filling in a form or paying a fee so that an existing EU right can be extended to the UK. If there was extra administration, such as form filling or fee paying, it could lead to a huge work load for not only practitioners but also the trade mark owners themselves, and of course the UKIPO.

The other element of Brexit most pertinent to trade mark practitioners is rights of audience before the EUIPO. This is probably the biggest concern right now. We do not yet know when the rights will change, and a number of UK practitioners are looking to link up with EU practitioners for future EU work, or looking to open offshoot premises (which must be real and effective offices, and not just a “brass plaque” address) for example in Dublin. It remains to be seen how this will affect my existing clients and my own practice. Financial institutions in the UK are already looking to relocate staff to premises to the EU to continue their current business. Should we all as UK trade mark practitioners consider doing the same?

You previously worked in the ‘tech capital’ San Francisco taking care of world-wide trade mark affairs; what do you think the UK could adopt in order to better the IP industry for your clients?

When I was seconded to San Francisco to work as a trade mark attorney in the USA, I saw a very different world. The experience was great, but scary at times. It was hard to get to grips with a complex practice that was very different to that operating in the UK. One of the hardest things was working through the Trade Mark Manual of Examining Procedure, to understand how to successfully work with the USPTO. However, it was good to get a broad perspective on, for example, trade mark use. I was lucky to have the assistance of a New York trade mark attorney who was available to help me when I was unsure, as I was the only person handling trade marks for the whole corporation at the time.

It is pointless to have a trade mark on file in the US with no use, and this is also relevant in the UK. This can leave the trade mark owner vulnerable to a challenge by a third party to their mark on the basis of non-use and they could actually lose their rights. It is not possible to stockpile registrations for possible future use – this is a dangerous thing to do. One thing the US does concentrate on is having a pure trade mark register, without the clutter sometimes seen in the EU or UK. Upon registration, a trade mark proprietor must show use of their mark to maintain that registration, and that use must be demonstrated upon renewal – I do not see a problem with this. It serves to clear out trade mark specifications for trade mark registrations, so that the register is easily understood – what remains is what is in use. This helps in trade mark clearance for availability and is a much more certain way of operating a public record register. I think it would be useful to adopt this practice in the UK.

As a thought leader, how are you increasingly raising the benchmark of standards when it comes to Trademark law, especially for your clients?

When dealing with my own clients I am constantly trying to be proactive. It was very useful to have practiced in-house in three different companies.  This leaves a feeling that you know the internal problems a trade mark owner faces, such as budget restraints, constant audits, advising on filing and defence strategy, gap filling as new markets become of interest, or brand extension when new product ranges or services are introduced under an existing mark, and prioritising work in general.

It constantly amazes me that updates in trade mark protection are often overlooked in-house, particularly in large corporate companies where there is no in-house IP department to advise. I see it as my role to ask questions and to fill those gaps. I like to visit my clients for those reasons, to get a good grasp of their business and interests and what needs to be done to protect those, together with any future plans they may have.

Generally, I love the variety faced in trade mark protection and defence. I can move from cosmetics to drinks to business services, to clothing, to garden sheds within a matter of minutes. One of the best things about the job is getting to know the clients, their businesses and plans. In addition, I have made a large number of friends and acquaintances around the world over the years, which is so useful in this international world. I try to update both clients and overseas associates with updates in law and procedures in the UK and the EU, plus anything new coming out from the UKIPO or the EU or even Brexit, so we can plan ahead for what is about to hit us.

Maggie Ramage

Partner

+44 (0)20 7691 4031

www.edwincoe.com
Maggie.ramage@edwincoe.com

Maggie is a Chartered Trade Mark Attorney on the UK Register of Trade Mark Attorneys, and a European Trade Mark Attorney practising before the European Trade Mark Office (EUIPO) based in Alicante, Spain. She is a Fellow of The Chartered Institute of Trade Mark Attorneys, and is a past President of that body. Maggie studied trade mark law while working in patent administration, and in 1982 became head of European Trade Marks for the Californian-based Raychem Corporation.

Maggie became a partner in Alexander Ramage Associates LLP in 1991, and in April 2015 joined Edwin Coe LLP as a Partner.

Her clients include start-up firms and multinationals, and range from medical practitioners to financial institutions, bath and beauty care specialists, hair care manufacturers, mobile telecom providers and food and drink providers.

Edwin Coe is a medium sized law firm, established in Lincoln’s Inn, offering many disciplines such as private client, litigation, tax, property, immigration, employment law, among others.

“The focus of the insurance industry should be on culture (including tone at the top, conflicts of interest management, and remuneration practices), disclosure of information to clients (particularly in terms of the nature and extent of the disclosures and how these are presented to customers), product oversight and governance (specifically in relation to documented policies and procedures as well as the testing and ongoing review of same) and, finally, training and development at all levels, including the board of directors”, suggest Malcolm and Diane at Camilleri Preziosi Advocates. 

They claim that these areas in insurance are likely to be high on the regulators’ agenda, both locally in Malta as well as at European level, and hence the insurance industry would do well to centre efforts on these matters in order to be able to withstand regulatory challenges, as well as contribute to the achievement of the underlying objectives of these regulatory regimes. They expand on this in their following interview.

Can you explain to our readers the relation between Malta and UK, in regard to the financial services? How does this relation enhance each jurisdiction?

Malta is part of the Commonwealth of Nations and although Malta gained its independence in 1964, Malta and the UK have maintained excellent relations in the political and economic spheres. This has facilitated the enhancement of bilateral ties and closeness in international fora, both within and beyond the capture of the European Union. The financial services industry is an important sector for both jurisdictions’ economies. Invariably, the UK has been the leading financial services hub in Europe and beyond; Malta, on the other hand, has established a thriving financial services industry which has benefitted the whole economy.

The UK’s decision to exit the EU poses certain challenges for both jurisdictions. The type of relationship that the UK will maintain with the EU post-Brexit is yet to be clarified, however there is little doubt that Malta is, and will remain, keen to maintain and enrich its strong connections with the UK. A Malta-UK Business Promotion Taskforce was set up recently, tasked with business promotion of Malta within the UK, with a focus on industrial, economic and financial activities in respect of which Malta is seeking to collaborate with the UK. Through the work of this Taskforce, Malta is reaching out to UK-based companies which are likely to want to set up base in a European Union Member State following Brexit, exploring ways in which to help such companies sustain their existing and future business models. It is encouraging to note that the interest that such companies have shown has already been significant, be it directly to the said Taskforce or via practitioners.

With the EU’s Fourth Anti-Money Laundering Directive bringing changes to the legal sector, is there anything you believe needs revising in Malta in relation to this?

Malta is still in the process of transposing the EU’s Fourth Anti-Money Laundering Directive into domestic laws. One of the benefits of this new regime is the enablement of a risk-based approach to AML compliance. This can definitely be used to the advantage of local operators, in that it allows them to tailor and shape their AML compliance regime in a manner that is proportionate to the nature, scale and complexity of their business and to the risks that they face. For a jurisdiction such as Malta, the proper application of the principle of proportionality is essential in ensuring that the introduction of a directive such as this is embraced as a leap towards improving one’s ways and systems, rather than a burden on its ability to conduct its operations. That being said, considering that the Directive allows vast discretion to national competent authorities to scale up the requirements, it is hoped that the local regulator will not adopt an overly-prescriptive approach which would defeat the purpose of the risk-based approach and negatively affect Malta’s competitive advantage in certain sectors.

In an effort to address these concerns, the regulator has been forthcoming with the industry by launching rounds of consultations in connection with the new AML regime, including a specific framework for the gaming sector. Consultations around the implementation of a central beneficial ownership registers are expected to follow shortly. It is hoped that initiatives such as these will assist the regulator in appreciating the circumstances and concerns of the subject persons of the Directive and consider same when taking a stand on certain aspects of the framework which are particularly relevant for Malta as a jurisdiction.

The reforms for the Insurance regulatory update aims to change transparency, fairness, consumer protection and harmonisation; in what ways do you believe this to be true?

The forthcoming Insurance Distribution Directive (‘IDD’) and the Regulation on Packaged Retail and Insurance-based Investment Products (‘PRIIPs’) are the two key frameworks which (re)insurance undertakings and distributors of (re)insurance products are focussing their efforts upon at the moment.  Both legislative instruments align closely to other directives in terms of what they are seeking to achieve, namely transparency, fairness, protection for consumers across European financial services, the delivery of good customer outcomes, and, more broadly, harmonisation across all pockets of financial services.

The disclosure obligations imposed on manufacturers and distributors of (re)insurance products under the IDD and the PRIIPs are far more extensive that what market players, particularly intermediaries, have been accustomed to under the preceding regime, namely the Insurance Mediation Directive, which will now be completely abolished and replaced by the IDD. The main aims of the Insurance Product Information Document and the Key Information Document are specifically addressed at mandating the disclosure of, inter alia, key risks and costs that the consumer should be made aware of. In addition, disclosure obligations around remuneration, inducements and suitability assessment are equally onerous. Most of these new provisions, as well as other requirements around governance structures, competence and product approval processes, also replicate similar provisions which investment firms are conversant with under the MiFID framework.

In theory, the means by which the EU is seeking to achieve the above-stated aim sound robust. However, the effectiveness of the regime will ultimately depend on how it is applied and enforced in practice. The behavioural biases that consumers suffer from in practice would seem to suggest that consumers might be prone to information over-load as a result of these additional disclosures and as a result may tend to turn to their advisers and rely their judgement rather than read through the plethora of documentation. Consequently, the use of traditional regulatory tools such as disclosures is no longer sufficient to protect consumer and policymakers are thus forced to consider alternative ‘nudging’ measures through which to address and counteract these biases.

Briefly, can you explain the regulatory changes occurring in the insurance industry and how this will affect your clients?

The local industry has demonstrated time and time again that it is capable of adapting to the challenges it has had to face. This is also evident from the flexible models that the local regulator has sought to introduce over the years in relation to insurance, including protected cell companies, incorporated cell companies, securitisation cell companies and reinsurance special purpose vehicles, amongst others. Further, the domestic market has responded well to the Solvency II regime and, notwithstanding certain challenges (particularly in terms of the nature and extent of investment in human resources and reporting systems), the local market remains well-capitalised and able to meet and exceed its compliance obligations however unsurmountable they might seem.

In light of the regulatory changes brought about by the IDD and the PRIIPs Regulation in particular, the local industry will once more have to introduce new internal processes and procedures where appropriate, as well as revisiting existing ones. More importantly, the industry will have to think hard about how to align these developments which are specific to the insurance sector to other broader regulatory changes, such as the new general data protection regulation, the market abuse regime and the changes to the anti-money laundering framework, as well as keeping abreast with parallel guidance, technical standards, and similar pronouncements being issued by the local and European regulators.

The industry cannot afford to concentrate its efforts solely on compliance, however. The insurance industry is constantly evolving and embracing innovative technology, such as robo-advice, automation, InsurTech, and other technologies relating to data analytics, in an effort to personalise policyholder experience and stay ahead of competitors. Today’s rapidly evolving environment, consumer-centric culture and increasingly technology-driven economy requires insurers to be agile in order them to prosper. The sooner they acknowledge that disruption is here to stay, that customers are key and that risks are constantly changing, the smoother the adaptation will prove to be. The insurance industry must also be alert to the fact that there are multiple potential benefits linked to big data analytics and processes, but there are also a number of growing risks, such as privacy issues and cyber threats, which may have a significant reputational impact on the insurer and the sector if they were to materialise, apart from other consequences attached to regulatory breaches.

Camilleri Preziosi

Level 3, Valletta Buildings

South Street

Valletta, VLT 1103

Malta

(+356) 2123 8989

www.camilleripreziosi.com

Malcolm Falzon is a Partner in the Corporate & Finance practice group at Camilleri Preziosi. His areas of specialisation comprise capital markets, M&A, aviation and gaming. He is also responsible for the firm’s insurance practice, assisting local and international clients on regulatory, corporate, licensing and dispute resolution matters. 

Diane Bugeja is a Senior Associate at Camilleri Preziosi Advocates, practicing primarily in the fields of financial services regulation and anti-money laundering regulation. Diane also advises local and overseas clients, including insurance and re-insurance undertakings and distributors, on the impact of the current and forthcoming regulatory regime on their business models.

Camilleri Preziosi is counsel to Malta’s largest broking house, prominent insurance companies and captives, and a number of other players in the insurance market including insurance agencies, insurance managers, loss adjusters and independent insurance consultants. The firm advises various London-based and continental insurance companies licensed to carry out business in Malta. The firm has amassed considerable experience in licensing and operational matters related to insurance and reinsurance, assisting clients in negotiations with the regulator for the purpose of setting up operations in Malta and, thereafter, in ensuring compliance with the regulatory framework.

The words ‘no deal’ are a prevalent occurrence in recent Brexit rumours. It’s also true that this seems to mean different things to different people.

If current Brexit talks end with a no deal, which is likely on the cards, what do you think would be the legal ramifications, for example what would happen in the criminal law sphere, how each individual sector change?

Below Lawyer monthly has heard Your Thoughts on the prospects of a no deal scenario, and what the legal sphere may see as a consequence.

Richard Thomas, Employment Lawyer, Capital Law:

With every new day showing more and more signs of a likely “no-deal” at the end of the two-year negotiation period, solicitors and other professionals alike are starting to dread what this deadlock will mean in practice.

From a lawyer’s perspective, the absence of any concrete and clear deal could spark legal and jurisdictional chaos across the UK. While we’ll hopefully have a ‘Great Repeal Act’ in force by this point, which would implement all EU legislation into domestic law, many fear that it doesn’t cover all bases. Legal and regulatory gaps could emerge post-Brexit

As an example, the EU has established several regulatory bodies (such as the European Aviation Safety Agency and the European Food Safety Agency) that regulate business activities in the UK. What will become of the regulation of such industries in the event of a legislative void?

Equally, domestic immigration law may find itself with an enormous question mark over its head following our withdrawal. With the debate on free movement of people at the forefront of Brexit negotiations, it cannot be said with certainty how migrants (both British and European) will be treated in the event of a no-deal.

Theoretically, it may be that the three million or so EU citizens residing in the UK will be treated as ‘third country nationals’. In practice, this may mean that each individual member state would have to barter an immigration deal with the UK to guarantee its citizens’ rights. A similar situation may arise for British nationals currently residing on the continent.

Commercial lawyers are also likely to be apprehensive of the future, given the potential ambiguity surrounding our trade relationship with the EU. Without a new trade agreement, the rules of the World Trade Organisation would apply by default. Worryingly, this would mean the imposition of tariffs and duties on goods sold by the UK to its European neighbours, and vice versa.

Whether “no deal is better than a bad deal”, as the Prime Minister so often puts it, is as yet unknown. But it’s this uncertainty that countless lawyers across the country dread the most.

Shara Pledger, Solicitor, Latitude Law:

If the current Brexit talks end with no deal, which is looking increasingly likely, there may well be a knock-on effect on both inbound (people entering the UK) immigration control, and the rules that will apply to British citizens entering or residing in Europe. The current regimes relating to non-EU and Irish citizens are unlikely to change.

Leaving the EU gives the UK the power to end free movement of people (one of the cornerstones of EU membership of course), and introduce its own rules and procedures. These could include tough new measures for both new migrants and those currently residing here. In real terms however, the government and UK industry both recognise that our economy relies heavily upon EU workers, and cannot afford to lose them. To this end, a transitional period will be required, and the UK will need to have a longer-term plan for managed EU migration.

From a practical perspective then, failure to reach a deal may not directly change the government's current plans for inbound immigration. However, it could leave British citizens living in or travelling to Europe without any guarantees – something that will no doubt be of concern for those likely to be affected.

Alfonso Valero, Principal Lecturer, Nottingham Law School:

The future of London as an international dispute resolution centre outside of the EU

Although there is some disagreement in the Cabinet as to whether or not there ought to be some planning for a “no-deal”, it is not impossible to think that the UK may not have reached a trade agreement when the Brexit day comes. This article looks at the risks on London as an international dispute resolution centre.
There are two important reasons for which London is an international forum for dispute resolution: one, English law as the chosen law for international contracts, particularly in financial and maritime sectors; and two, a long tradition of legal practice with judges committed to promote London as a dispute resolution centre, as demonstrated by Mr Penadés in his article ‘Commercial Choice of Law in Context: Looking Beyond Rome’.

On that basis, some may feel that London will not really suffer as a consequence of a no-deal. However, the pre-eminence of London courts cannot be understood in recent times without the tools for recognition of judgements (Brussels and Lugano regime) and the uniformity that provides the Rome regime in the applicable law. Outside of that context, enforceability of judgements across the European Economic Area becomes less clear and therefore the balance may be inclined in favour of other internationally recognised financial centres such as Paris or Munich. The UK government is very much aware of that and that’s why the paper ‘Enforcement and dispute resolution - A future partnership paper’ considered joining the Lugano Convention, which would mean joining the European Free Trade Agreement.
Accordingly, it is to be expected that a no-deal together with being outside of the EFTA would damage quite considerably the importance of London as a litigation forum. In all likelihood will be able to retain a very significant proportion of the disputes which have no real links to the EEA, but any litigant seeking recognition within the EEA would be minded to find a more suitable forum.

When it comes to arbitration, as shown by Professor Mistelis and Mr Friedland in their 2015 International Arbitration Survey, London is very much a preferred forum internationally, alongside Paris, Hong Kong, Singapore and Geneva. It can be said that as arbitration is outside of EU law, membership of the EU/EEA is irrelevant; more so considering that since West Tankers there have been cases of arbitration running parallel to litigation. Additionally, the parties choose arbitration precisely to avoid resorting to courts. On that basis, it can be said that London as an arbitration centre should not be in danger.

However, arbitration cannot be separated from the economic activities. If the companies that get involved in arbitration have relocated following the withdrawal of the UK from the EU, they may easily choose a different seat of arbitration.

We would also love to hear more of Your Thoughts on this, so feel free to comment below and tell us what you think!

As part of A&O’s 2017 Annual Review, ‘Leading in Uncertain Times’, its ‘Perspectives on Brexit’ report considers some of the key questions for Allen & Overy and its clients regarding a UK exit from the EU.

The A&O website reads: “With the negotiations gaining momentum, we have focused this report on three main issues: the future of EU/UK trade, the role of the European Court of Justice and the English courts after Brexit, and the effect of Brexit on the development of global legal systems.”

The report also features expert independent political commentary on the negotiations from Charles Grant of the Centre for European Reform and insights from our Senior Partner, Wim Dejonghe.

Click here to read the full report.

(Source: Allen & Overy)

An article written on trade, commercial law and litigation, by leading expert Philip Lee

Whilst my title is Managing Partner I am not convinced I fulfil that role. My colleagues, who are heads of their various departments, do an amazing job at managing their own departments. What I try to focus on is providing a vision for the future and ensuring that we remain loyal to our values as they are the very essence of our existence.

I am very active as a practising lawyer, particularly in the areas of procurement and competition law. I also have a rather unique experience in WTO law. I was the first private lawyer to represent countries, in this case 77 countries from the ACP group, before the panel and appellant body of the WTO in the very long running and famous banana dispute. This was the most complex WTO dispute ever before the panel or appellant body.

In about 1995 I was appointed through a tender process to represent the 77 countries of the ACP Group in the major WTO dispute. I brought together a team with an American lawyer (former Deputy United States Trade Representative) and a French speaking lawyer who had previously been a high-ranking official with considerable experience of trade matters. Thus, I was ensured that my team covered all aspects and provided the experience needed to fight this comprehensive battle. The most challenging aspect of it in some respects was coordinating the responses from the capitals of the countries I represented. It is no easy task representing 77 countries and coordinating, through both the capitals and their representatives in Geneva, a coordinated position in a complex matter such as the banana trade dispute.

I also was a visiting professor of international trade law in UCD for about five years.

WTO and International Trade Law

WTO and international trade law were considered quite esoteric for most of the past 20 years with only a handful of lawyers having any practical experience in the substantive and procedural elements of this area of law. This is changing now and is likely to change even further as a result of the decision by the UK to implement a Brexit strategy. I have delivered seminars on what I consider will be the implications and the outcome of the UK position on Brexit. So far my predictions have proved accurate.  I correctly predicted that the UK would adopt a position of seek to enter into a customs union, like Turkey, with the EU. However, unlike the UK Government, I predicted that participation in the customs union would last between five and ten years. I note the UK suggests this may be a two-year interim arrangement. I believe I will be proved right. My confidence in my prediction stems partly from the fact that there seems to be a refusal to accept the reality that the negotiation of a comprehensive free trade agreement (FTA) with the EU (or for that matter with any other contracting party of the WTO) is a highly complex matter, even if you have an experienced negotiating team at your disposal. It usually takes upwards of ten years. The UK is short of experts experienced in trade negotiations and international trade law. They will not be able to set up a comprehensive FTA with the EU or anybody else within a two-year period. The UK strategy seems designed to produce confusion. When one examines the Prime Minister’s Lancaster House speech and the 11 objectives outlined in relation to their relationship with the EU, it is plain as a pikestaff that most of the objectives are completely contradictory and cannot be delivered. It is tantamount to the Prime Minister announcing that they have decided that in the UK, all cars should drive in the left hand side of the road but they are also going to allow cars to drive on the right hand side of the road! I await the car crash!

The UK has also ignored the fact that, whilst they are undoubtedly a member of the WTO, the UKs schedule of commitments (which represent what they will offer every other country concerning import duties and arrangements) is in a vacuum. It is possible that it will take years to establish the UK as an independent entity with its own schedules of commitments within the WTO. Simply adopting the EU schedule as its own is more complex than is being made out.

As things currently stand the only certainty is that UK companies involved in export or import and UK financial industries face uncertainty over the next, possibly lengthy, period. Nature does not like a vacuum and similarly business does not like uncertainty. Unfortunately, the uncertainty is a fact. We already see today a flight from London of financial institutions. The uncertainty means that a UK company exporting is unable to tell its customer what the import tariff or quota arrangements will be in the future. This is because the UK has announced that it will not be in the EU and it does not have a trade agreement with any other country. This leaves every UK importer and exporter vulnerable to any competitor located within the EU. That EU competitor will knock on the door of the customer of a UK exporter saying, ‘Hello, I can provide you my product and I can provide you absolute certainty in terms of the import duties into your country that this product will face, and I can probably also provide you with pretty good comfort in relation to the currency and costs of my product’. They can also say that, insofar, ‘as my product is made up of imports from other EU member states or even countries outside of the UK, I know the cost of importing the components that make up my product and I can therefore assure you that you will have the same quality and the same predictability of price as you have always had.’ The UK competitor of this EU Company is left somewhat abandoned. Whilst the flight of the banks has taken place, this second ‘flight’ of international customers and UK manufacturers will soon begin to be seen.

Which sectors boast the most challenges as a litigator?

Firstly, I would say the most challenging area of law to litigate is competition law. This is because in Ireland the size of the market is relatively small but the costs of a full competition case, with the requirement of expert evidence and a great deal of factual information poses significant challenges.  The challenges also arise from the need to get comprehensive discovery of “covert” actions. It is not clear that judges recognise the particular challenges of competition law and the need for a more intelligent approach to discovery to find documents - those documents usually being evidence potentially for criminal conduct. Having said that, we have had some phenomenal successes in competition law including establishing fascinating precedents on the entitlement to discovery, and also in receiving significant levels of compensation.

The Energy Sector

The energy sector is interesting because when there is a regulatory issue there are many different avenues which must be considered in delivering a solution to the client. There is obviously the possibility of dialogue with various Directorates or a formal complaint to the European Commission. There is also the possibility of dialogue with the Department for Energy or with the Commission for Energy Regulation (CER). These bodies may be under resourced and have difficulty keeping up with the complexities involved in ensuring the lights stay on, the cost of energy is as low as possible, and addressing climate change. In addition to dialogue with those bodies there are also the possibilities of litigation before the High Court or with the specific sectoral regulatory bodies. The variety of avenues makes the task particularly enjoyable and stimulating.

The other fascinating thing about the energy sector is that it is closely tied to climate change. From the very beginning, we have been heavily involved in renewable energy. We were advisers to the first Irish major renewable company Airtricity, and are currently advisers to the Sustainable Energy Authority of Ireland (SEAI) and numerous renewable energy developers. I was Founding Chairman of the Irish Green Building Council, whose objective is to facilitate the creation of a greener built environment.

As a firm we are passionate about the opportunities created by decarbonisation. We intend to be at the forefront of this challenge.

The Health Sector

Aside from energy I would also say that our experience in the health sector has been extremely rewarding. We advise many players in the health sector including the Health Services Executive (HSE). The HSE is the equivalent of the NHS in the UK and is the provider of public health services throughout Ireland. We work on many of their most exciting projects from procurement challenges to drugs pricing to major construction and PPP projects. One of the advantages of working for the HSE is that it is highly motivating. It is an organisation that will always be subject to criticisms in the press, but from our experience it is full of professional and dedicated clinicians and managers.

Whilst I believe we have the best lawyers in the country bar none, what we are particularly skilled at also doing is helping clients foresee their future. This is good for our clients and also very good for us as a law firm. I have always tried to foresee where the law was going and hoped to be the only lawyer in a particular area. So far, I think I have succeeded in achieving this.

Philip Lee is the Managing Partner of a 110 person law firm with headquarters in Dublin and offices in San Francisco and Brussels. The aim of the San Francisco office is to bring US companies to Ireland. The Brussels office, on the other hand, is aimed at WTO and EU Competition law issues and servicing clients with EU related problems. Philip is a leading expert in the area of procurement, competition, trade and construction law.

Philip advises clients in relation to the largest public utilities projects in the country. His extensive PPP experience includes roads, waste, waste water and electricity PPP projects where he acts for both public and private bodies.

Below we have a short Q&A with Ogier Partner, Daniel Richards, who discusses The International Stock Exchange. As we are into the latter half of 2017, Daniel speaks on the development of the Exchange over the last 12 months and where opportunities have arisen, most notably as a result of Market Abuse Regulation and further interest globally in what it can provide institutional investors.

What developments have affected TISE in the last year?

From the perspective of The International Stock Exchange (TISE), there have been three significant developments over the last 12 months: the impact of the EU Market Abuse Regulation which came into effect on 3 July 2016; the TISE expansion to the Isle of Man (and accompanying rebrand); and, inevitably, Brexit uncertainty. The Market Abuse Regulation (MAR) extended the scope of existing EU market abuse regulation to issuers of debt securities which are currently listed on EU markets for the first time, including many commonly used exchanges for the listing of Eurobonds. MAR requires that appropriate measures, including policies and procedures, are put in place to ensure compliance, for example in respect of additional disclosure requirements, the preparation of insider lists and reporting of transactions involving persons discharging managerial responsibilities within the issuer (PDMRs) (which can have a de minimis threshold in certain Member States as low as €5,000 to trigger the reporting obligation) and the maintenance of lists of such PDMRs and any associated persons. As an internationally-recognised exchange situated in the London time zone applying generally applicable London market norms with recognised expertise particularly in relation to debt securities but without the additional regulatory compliance burden of MAR, TISE has seen a 50% increase in year-on-year debt listings.

Aside from MAR, how does TISE position itself in regulatory terms?

The absence of MAR compliance is not to say that the regulatory standards of the exchange present a soft option. TISE's position on MAR is instead recognition that specialist debt securities issued by special purpose vehicles (as defined in the exchange listing rules) tend to be purchased and traded by a limited number of sophisticated and/or institutional investors. Disclosure requirements in the listing particulars have been set at a level to provide such investors with sufficient information to make an informed investment decision regarding the listed securities but without imposing unnecessarily onerous demands on an issuer. TISE's status as a highly-regarded exchange in terms of regulatory requirements is underlined by its status as an Affiliate Member of both the International Organisation of Securities Commissions (IOSCO), and the World Federation of Exchanges (WFE), and the more recent recognition from the German financial services regulator (BaFin) enabling German UCITS funds – which are designed for retail investors – to invest into products listed on the exchange. That recognition demonstrates that the absence of MAR is not viewed as a regulatory weakness inside or outside EU countries, on the contrary, the international recognition substantiates the highly regarded position of TISE-listed securities in terms of investor asset allocation.

In commercial terms, what has the impact of these development been?

This combination of factors has led to a very healthy growth in activity on TISE during 2017. The exchange has said publicly that the first five months of the year saw 270 new listed securities, representing a 50% rise on a year-on-year basis. They have also confirmed that – as forecast by ourselves among others and on which we have advised – there have been migrations from other exchanges which are subject to MAR.

Who is using TISE?

There is an increasingly international flavour to the promoters, arrangers and issuers using TISE. Chinese and South African firms have used the exchange in recent years, and the more recent activity demonstrates an increased popularity and market share in Europe and the US. Of more interest, perhaps, than the geographical spread is the range of industry sectors represented on the exchange – at the end of last year, the exchange listed the first regulated Bitcoin fund to be listed on any exchange globally, laying down a marker that the exchange is open to innovative activity. New activity on TISE includes a mix of European and US companies (including high-profile issuers such as Netflix).

Is there a flow of business from MAR-regulated exchanges?

TISE has confirmed publicly that the last 12 months has seen both new issuances, and migrations from exchanges subject to MAR, including the Irish Stock Exchange and the Luxembourg Stock Exchange. As the leading sponsor of listings on TISE (and as a member of the exchange since its launch in 1998) our team at Ogier has seen significant activity in listings across a range of areas including bonds, corporate debt and special purpose vehicles.

How does Brexit play into the current position?

The shadow of Brexit hangs over much of what we see in terms of current trends in international investment activity, and albeit that TISE's position outside of the UK and the EU is not directly affected by the UK's decision to leave the EU, it has had an impact. The main implication is that while questions about the potential impact of Brexit on the regulatory environment remain in the air (and appear likely to remain unresolved for some time) TISE represents something of a beacon of certainty. The fact that there has been marked growth since the Brexit vote tends toward supporting this view.

What does the future hold for TISE?

TISE has almost two decades of established track record behind it as a recognised exchange, and its recent growth bodes well for the immediate future. That optimistic view is supported by a range of factors: close links to London, in physical as well as professional terms; increased visibility since its expansion and rebrand; the non-applicability of MAR compliance; the stability it presents in contrast to the Brexit uncertainty; and the international recognition of its standing including in terms of asset allocation eligibility for the most highly regulated EU retail investor funds. As the leading sponsor in terms of listings, and having been involved since its launch in 1998, the Ogier team is ready to assist with any inquiries about any aspect of listing on TISE.

Daniel Richards
Partner
Jersey, Luxembourg
www.ogier.com

Daniel practiced in a City law firm before joining Ogier in Jersey, and recently returned to the Island after having spent five years in Luxembourg having jointly established Ogier's presence there. Daniel is qualified in England and Wales, Jersey and Luxembourg.

Ogier provides practical advice on British Virgin Islands, Cayman Islands, Guernsey, Jersey and Luxembourg law through our global network of offices. Ogier is the only firm to advise on these five laws. We regularly win awards for the quality of our client service, our work and our people.

Barristers have warned that the European Union (Withdrawal) Bill’s approach to ‘bringing rights home’ is a recipe for confusion and puts the rights of UK citizens at risk.

The Bill adopts EU law in to UK statute, but the legal status of a number of corresponding rights that come from treaties is still unclear and that could place UK citizens and businesses at a disadvantage compared with those in the EU, the Bar Council has said.

Chair of the Bar Andrew Langdon QC said: “After exit day, UK citizens will find that domestic courts enforce the same laws as they do now, except that they may not be able to apply the underlying treaty provision. This could mean that where the rights of EU and UK citizens are interfered with by the same law, EU citizens would be able to challenge that law, but UK citizens would not.

“It is a recipe for confusion. Far from bringing rights home, this Bill sets up UK citizens for second class status.

“The Bill will also give UK citizens less protection against the power of the state as they will no longer be able to challenge EU law brought into UK law on the basis of non-discrimination, proportionality, legal certainty or the right of defence. Instead, legal challenges will be limited to more restrictive English law grounds such as rationality.

“For example, in 2014 the Welsh Government tried to give ten times as much farming aid to lowland farmers as hill farmers, but the move was abandoned when the hill farmers pointed out that the decision was discriminatory. That argument will not work after exit day.”

Environment

On the Bill’s impact on UK environmental law, Andrew Langdon QC said: “By taking a ‘snap-shot’ of EU law and adopting it into UK statute, the Bill offers no mechanism for the UK to keep pace with international conventions and agreements. Our laws may quickly become out-of-date and that could put the UK in non-compliance with its international obligations.

“Without clarity as to how courts should approach future judgments of the CJEU, there is a risk that different case law will emerge on the same legislation as European and UK courts may interpret them in different ways. This would inevitably create uncertainty and confusion for businesses which operate in both the UK and Europe.”

Devolution

On the impact of the Bill on devolution and the National Assembly for Wales, Andrew Langdon QC said: “The Bill will give UK ministers the power to amend adopted legislation that falls within the devolved competence of the National Assembly, without being answerable to the Assembly or requiring that the Assembly pass a legislative consent motion.

“A number of the Bill’s provisions give ministers in Westminster powers which, if exercised, could undermine the Sewel Convention and threaten the stability of our devolved constitutional arrangements and the legitimacy of the Welsh Assembly.”

(Source: The Bar Council)

Alison Horner, VAT partner at MHA MacIntyre Hudson, below discusses the UK government’s recent moves on customs duty.

This announcement is a very bold step from the UK government, especially given the EU’s public stance on the single market and the clear message that Brexit means an exit from the associated free trade arrangements. But the step is very much needed to get us to a workable transitional agreement.

Without decisive action, we appear to have only one outcome, defaulting to the World Trade Organisation’s (WTO) customs duty tariffs. The Government’s understanding of the practical implications of this outcome is finally becoming evident, which should be reassuring for businesses.

A Free Trade Agreement (FTA) is what all UK businesses who deal with European trade really want. It’s also better for UK consumers, who, without an FTA, could for example be faced with an additional 10% Customs duty cost when they buy a European car. Businesses trading with the EU may also encounter administrative snarl ups, similar to those seen recently with holiday makers at passport control in some EU destinations.

These proposals are only a starting point and we think that the retail and motor industries in particular will lobby hard for a sensible agreement, as it affects both importers and exporters of goods throughout Europe. In the meantime, businesses should continue to assess the potential worst-case scenarios and review WTO tariff codes for their intra-EU supply chains, just in case.

Professor Patrick Minford believes scrapping tariffs could lead to a huge boost as the European Council could delay #Brexit talks in October if not enough progress is made.