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26 April 2018 | Europe
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The UK ratifies the Unified Patent Court Agreement on World IP Day 

26 April 2018

The UK has ratified the UPC Agreement today, which also happens to be World IP Day. 

The UK IP Minister announced the ratification at a World IP Day event at the House of Commons this afternoon. It seems that the UK Government has listened to the many representative groups in the Patent arena who suggested that being part of the new system prior to Brexit was preferable to trying to join it post-Brexit.  Now we need to wait to see if the German constitutional challenges can be resolved before the end of March next year. 

The UK, along with France and Germany, is one of three signatory states which must ratify before the Agreement can come into force. France ratified long ago (2014), so German ratification is all that is now needed. Ratification by Germany has been held up by challenges to the legislation which was passed to allow Germany to ratify in both the Bundestag and the German Constitutional Court. Neither has yet been resolved. 

15 other countries have already ratified the UPC Agreement. Once Germany ratifies, the Agreement will come into force on the first day of the fourth month after the month of that last required ratification. Assuming the constitutional challenges fail, German ratification will likely be timed to coordinate with the new Unitary Patent Court being ready to operate. Once in effect, the UPC court will operate across all current EU states except Croatia, Poland and Spain which have not signed up to the Agreement. A European patent with unitary effect (otherwise known as a unitary patent) will be available, covering all the participating states, once the UPC is established. Unitary patents will be enforced through the UPC which will also have jurisdiction over European patents which have not been opted out of the new system.

For more on the UPC Agreement including the other states which have ratified already see the UPC Agreement section of our UPC hub (www.hsf.com/upc). 


 

The UPC and unitary patent - March 2018 Update

1 March 2018

On 21 February details were published of cases listed to be heard by the German Federal Constitutional Court which included the complaint against Germany's participation in the UPC system which has been holding up further preparations for ratification of the Unified Patent Court Agreement (UPCA) by Germany (see the Unified Patent Court Agreement section of our UPC Hub for more detail on this). The listing of the application raises the prospect of a decision sometime in 2018 which, if in favour of Germany being able to ratify, would allow the UPC to move towards commencement, but only if the UK also ratifies.  The timing of any result of the hearing will be significant: early, and the UPC may be able to get going before Brexit, late and there may be more problem with the UK being part of the UPC if it is already outside the EU by the time the UPC commences (which will only  take effect on the first day of the fourth month after the month in which the last of Germany or the UK has ratified the UPCA). There is general uncertainty as to whether a non-EU member state can be part of the new system. Much will be dependent on whether the CJEU will accept such an arrangement.

The UK took a further step towards ratification by the Privy Council approving The Unified Patent Court (Immunities and Privileges) Order 2018 on 8 February 2018 which confers legal capacity and grants immunities and privileges on the Unified Patent Court and its representatives, judges, Registrar, Deputy-Registrar and staff. This needed to be approved before the UK could proceed to ratification.  As yet no date has been announced for UK ratification however.

For more on ratification, including the 15 EU member states who have already ratified (Latvia being the most recent, on 11 January 2018) and the potential impact of Brexit on the new system, see the UPCA section of our website. 


 

THE UNIFIED PATENT COURT  - OPEN FOR BUSINESS IN 2018?

19 January 2018

At the start of 2017 the expectation was that the UPC Agreement would achieve the required ratification levels and that the UK could well ratify in advance of Brexit in order to become a full participant, even given the question marks that arose about the ability of a non-EU jurisdiction to be part of the new unitary and European patent enforcement system. Now, at the start of 2018, things are still uncertain.

Despite the IP Minister's announcement in November 2016 that the UK would ratify, no ratification was forthcoming, although the UK has drawn closer to ratification as a result of the International Organisations (Immunities and Privileges) (Scotland) Amendment (No 2) Order 2017 being approved by the Scottish Parliament on 25 October 2017. This order will confer certain privileges and immunities on the UPC and its judges and other staff. The equivalent statutory instrument, the Unified Patents Court (Immunities and Privileges Order) 2017 was laid before the House of Commons on 26 June 2017 and following approval by both chambers of the Westminster parliament (including the House of Lords in December 2017), it is waiting approval by the Privy Council, along with the Scottish order. Representative bodies of IP practitioners joined together shortly before Christmas 2017 to send a note to the Government on the key areas that need addressing prior to Brexit, including ratification of the UPC Agreement (see our post on this here).

Elsewhere in the EU three more states ratified the UPCA in 2017: Italy, Estonia and Lithuania, and Latvia on 11 January 2018. This brings the total number of ratifying states to 15 more than the 13 required, but still missing two of the mandatory ratification states other than France: Germany and the UK (while it is still in the EU).

However, with France ratifying the Protocol on Privileges and Immunities at the end of December 2017 and Belgium adopting legislation in December to implement the UPC, the EU looks poised to commence the new court system as soon as possible once the UK leaves the EU. This will be possible only once Germany has ratified. Italy will take the place of the UK as the third mandatory ratifier after France and Germany, and has already ratified as mentioned above.

German ratification is dependent on the outcome of the challenge being mounted in the German Federal Constitutional Court (FCC) regarding the constitutionality of the law passed by German Parliament on the UPC's implementation. The German court has asked for observations on the case and had previously set a deadline for any comment by end of October 2017 – though it has been reported that this has now been extended to the end of the year. The FCC will then determine whether or not to dismiss the complaint, a process which is expected to take until at least April 2018. If the complaint is dismissed, Germany will be able to ratify the UPCA soon after. There has, however, been talk of the possibility of the case being referred to the Court of Justice of the EU (CJEU), which would cause substantial delay to the case being decided and ultimately to Germany's ratification.

The Preparatory Committee of the UPC published a "Summing up and looking forward" press release on 21 December 2017 detailing the "provisional application" phase and how this will work. It is essentially a pilot phase which will be allowed to come about if sufficient signatory states agree to the Protocol on the Agreement on a Unified Patent Court on Provisional Application. The protocol means that the State Parties agree to apply the institutional, organisational and financial parts of the UPCA provisionally before the UPCA enters into force. Once the Protocol enters into force, the organisation (as such) will therefore be created and acquire legal personality. The Administrative Committee, the Budget Committee and the Advisory Committee will be established at the start of provisional application and will then take over the responsibility of the preparations from the Preparatory Committee.

During the provisional application phase the organisation will be able to conclude necessary agreements with third parties and formalise all the preparatory work done by the Preparatory Committee. One area that cannot be conducted before the provisional application phase is the completion of the recruitment of the judges. This is obviously a significant difficulty for the committee. Only once the judges are appointed the two Presidents can be elected, the Presidium can be set up and the Registrar and the Deputy Registrar can be appointed.

However, for the Protocol on Provisional Application to come into effect, 13 signatory states - which have signed the UPCA (and which must include France, UK and Germany) and have ratified the UPCA or informed the depositary that they have received parliamentary approval to ratify the UPCA - must have signed and ratified, accepted or approved the Protocol (in accordance with Article 2(2) of the Protocol) or declared themselves bound by Article 1 of the Protocol. These cover, inter alia, the establishment of the UPC, the Registry, the Mediation and Arbitration Centre, the training and appointment of judges, and the provisions allowing for the UPC Statute and Rules, legal aid, remuneration of judges, the setting up of local or regional divisions, and the establishment of the pool of judges.

Now that the UK has signed the Protocol, along with the other 2 mandatory signatories, the Protocol is close to coming into effect, although a few more signatories and ratifications are needed.  The UK will still need to pass legislation (via statutory instrument) to ratify the Protocol as will some other signatories.

The UPC Preparatory Committee says it has assessed that the (even once sufficient ratification of the Protocol has taken place) the provisional application phase needs to be a period of between six to eight months in order to have time to put everything in place and prepare for the Court to be operational.

UPC news from 2017

November UPC Update

7 November 2017

In June we gave an update on the progress of the UPC, including the announcement by the UPC Preparatory Committee that the 1 December 2017 start date could not be maintained. We reported on the need for ratification of the UPC Agreement, as well as the UPC Protocol on Provisional Application (the Protocol), by a number of states including the UK and Germany, which are mandatory signatories along with France.

UK

The UK has recently drawn closer to ratification as a result of the International Organisations (Immunities and Privileges) (Scotland) Amendment (No 2) Order 2017 being approved by the Scottish Parliament on 25 October 2017. This order will confer certain privileges and immunities on the UPC and its judges and other staff. As we have reported on previously, the equivalent statutory instrument, the Unified Patents Court (Immunities and Privileges Order) 2017 was laid before the House of Commons on 26 June 2017 and is awaiting approval by both chambers of the Westminster parliament. Before this can occur, it must pass through three committees: the Joint Committee on Statutory Instruments (JCSI), the Secondary Legislation Scrutiny Committee and the Delegated Legislation Committee. The members of the JCSI were recently re-appointed (on 31 October 2017), following its dissolution prior to the general election in June this year. It is now up to the JCSI to report on any instance where legislative power has been exceeded or the drafting of the order is defective or requires further explanation.

Germany

There has been some delay to the German ratification of the UPCA, owing to a case pending before the German Federal Constitutional Court (FCC) regarding the law passed by German Parliament on its implementation. The German court has asked for observations on the case and had previously set a deadline for any comment by end of October 2017 – though it has been reported that this has now been extended to the end of the year. The FCC will then determine whether or not to dismiss the complaint, a process which is expected to take until at least April 2018. If the complaint is dismissed, Germany will be able to ratify the UPCA soon after. There has, however, been talk of the possibility of the case being referred to the Court of Justice of the EU (CJEU), which would cause substantial delay to the case being decided and ultimately to Germany's ratification.

Overall, according to the latest update on the UPC website, published on 21 September 2017, while good progress has been made, "[i]t is now difficult to predict any timeline". 


 

Guidance on the Unitary Patent from Herbert Smith Freehills and the EPO

15 September 2017

Want to know how to obtain the new unitary patent right that will become available across 26 of the 28 EU member states (including the UK) once the Unified Patent Court is established? Wondering how the new right will impact on your patent portfolios and licensing schemes? 

Herbert Smith Freehills' Laura Deacon (Of Counsel) and Joel Smith (Head of IP, UK) have had a practice note on the unitary patent published by Practical Law which looks at these issues, including patent portfolio management and transactions involving the new right.

A quick reminder on the basics of obtaining a UP:

  • In order to be eligible for registration as a unitary right, a European patent must have been granted with the same set of claims in respect of all 26 participating Member States. The new EPO guide states that "It is therefore important not to withdraw the designation of any of the 26 participating Member States because this would rule out obtaining a Unitary Patent. Moreover, a European patent should not contain a different set of claims for any of the participating Member States, as this too would also prevent the EPO from registering a Unitary Patent."
  • To obtain a UP: a formal "request for unitary effect" must be filed with the EPO in writing by the European patent proprietor. This request must be filed no later than one month after the mention of the grant of the European patent is published in the European Patent Bulletin.

The EPO published guidance on obtaining, maintaining and managing unitary patents on 7 September here.

The guidance details:

  • How to obtain a unitary patent (UP)
  • The compensation scheme for translation costs
  • Renewal fees
  • Publications and file inspection
  • How to register transfers, licences and other rights and file statements on licences of right
  • Procedural questions, language regime , representation and fee payment
  • Legal remedies against EPO decisions: the role of the UPC

For more on the unitary patent see our dedicated UPC and UP Hub here.


 

Lithuania becomes 14TH to ratify the UPC Agreement

6 September 2017

Lithuania has now ratified the UPC Agreement (UPCA) (on 24th August 2017 - see the UPCA ratification index here).

Under the terms of the UPCA, the Agreement can only come into effect once at least 13 contracting states have ratified, but these must include France, Germany and the UK (if all other ratifications are in place prior to Brexit) or Italy (if post-Brexit). France and Italy have already ratified, as have Austria, Belgium, Bulgaria, Denmark, Estonia, Luxembourg, Malta, the Netherlands, Portugal, Sweden and Finland.  Once all the required ratifications are in place the UPC can commence on the first day of the fourth month after the last required ratification.

The delay to German ratification has been caused by a complaint being filed at the German Constitutional Court which led to the Court asking the German parliament to delay signature of legislation that would have progressed the UPCA's ratification by Germany.

The UK put some of the UPC ratification legislation before Parliament in June. The Unified Patent Court (Immunities and Privileges) Order 2017 was laid before Parliament on 26 June 2017 – see the explanatory memorandum here. This Order implements the Protocol on Privileges and Immunities of the UPC  (the Protocol)  and confers legal status in the UK on the United Patent Court and privileges and immunities on the Court, its judges and staff, under the International Organisations Act 1968, which allows the grant of certain immunities and privileges to the international organisation and its officers and employees. This Order (and an equivalent measure in the Scottish Parliament) needs to be passed before the UK can ratify the Protocol as well as the UPC Agreement itself. However, both Houses of Parliament will be required to debate the measure before approving it and it will also need the approval of the Privy Council. 

As we have reported on our Intellectual Property Notes blog and on this Hub,  the timetable for the UPC appears to be slipping, due not only to delays by the UK, in part due to the recent general election, but also because of the challenge to German ratification mounted in the German Constitutional Court mentioned above. The UPC Preparatory Committee have withdrawn their 1 December 2017 start date and are as yet unable to confirm any further dates.

Ireland's ratification is not a pre-requisite for the UPCA to come into effect (now that there are already sufficient ratifiers) but its process is worthy of note as it requires a referendum.  A recent announcement suggests this will happen at some point in the next two years.

One other key ingredient is also missing: there have also been delays to the Protocol on Provisional Application which is required to be ratified by contracting states in order to allow the administrative preparations for the courts, including the appointment of judges, to go ahead in order for the UPC to be ready immediately the UPC Agreement comes into force.


 

Estonia ratifies the UPC Agreement – 13 ratifications now in place – just Germany and the UK to go

2 August 2017

Estonia ratified the UPC Agreement (UPCA) on 1 August 2017, making it the thirteenth contracting member state to do so (see the European Council's ratification index here). Under the terms of the UPCA, the Agreement can only come into effect once at least 13 contracting states have ratified, but these must include France, Germany and the UK (if all other ratifications are in place prior to Brexit) or Italy (if post-Brexit). France and Italy have already ratified, as have Austria, Belgium, Bulgaria, Denmark, Estonia, Luxembourg, Malta, the Netherlands, Portugal, Sweden and Finland.  Once all the required ratifications are in place the UPC can commence on the first day of the fourth month after the last required ratification.

For our report on the delay to German ratification caused by a constitutional challenge see here.

The UK put some of the UPC ratification legislation before Parliament in June (The Unified Patent Court (Immunities and Privileges) Order 2017 see here.

Ireland's ratification is not a pre-requisite for the UPCA to come into effect (now that there are already sufficient ratifiers) but its process is worthy of note as it requires a referendum.  A recent announcement suggests this will happen at some point in the next two years.

One other key ingredient is also missing: there have also been delays to the Protocol on Provisional Application which is required to be ratified by contracting states in order to allow the administrative preparations for the courts, including the appointment of judges, to go ahead in order for the UPC to be ready immediately the UPC Agreement comes into force.


 

Government lays pre-ratification UPC legislation before Parliament

28 June 2017

The Unified Patent Court (Immunities and Privileges) Order 2017 was laid before Parliament on 26 June 2017 – see the explanatory memorandum here. This Order implements the Protocol on Privileges and Immunities of the UPC  (the Protocol)  and confers legal status in the UK on the United Patent Court and privileges and immunities on the Court, its judges and staff, under the International Organisations Act 1968, which allows the grant of certain immunities and privileges to the international organisation and its officers and employees. This Order (and an equivalent measure in the Scottish Parliament) needs to be passed before the UK can ratify the Protocol as well as the UPC Agreement itself. However, both Houses of Parliament will be required to debate the measure before approving it and it will also need the approval of the Privy Council. 

As we have reported on our Intellectual Property Notes blog and on this Hub,  the timetable for the UPC appears to be slipping, due not only to delays by the UK, in part due to the recent general election, but also the recent challenge to German ratification mounted in the German Constitutional Court. The UPC Preparatory Committee have withdrawn their 1 December 2017 start date and are as yet unable to confirm any further dates.


 

Private challenge to the UPC system made before German Constitutional Court delays progress of German UPCA ratification

15 June 2017

On 7 June, the UPC Preparatory Committee announced that the December start date could no longer be maintained. The Preparatory Committee says that it is monitoring UPCA ratification and participation in the Protocol continuously in order to be able to establish a timetable for a start date as soon as possible. Since that announcement, German press articles suggest that there has been a private challenge before the German Constitutional Courts concerning the UPC System in light of which the Court has requested that the approved bills are not signed, such that ratification by Germany cannot be completed. The nature of this challenge, and therefore the length of any delay it may cause, is currently unclear.


 

UPC COMMENCEMENT POSTPONED –1 DECEMBER 2017 START DATE CANNOT BE MAINTAINED ANNOUNCES PREPARATORY COMMITTEE

08 June 2017

In January we reported the UK IP Minister Jo Johnson's enthusiastic support for the UPC and ratification of the UPC Agreement (UPCA) whilst the UK is still a member of the EU. Without this, the UPC system would have to wait for the UK to leave, before the next most patent designated EU state at the date of signature of the UPCA (which would be Italy) could fulfil the role as third mandatory ratifier (after France and Germany). The UPC Preparatory Committee announced earlier this year that it was still confident of a 1 December 2017 start date, as long as the expected final ratifications were in place. This was a significant caveat given the Brexit situation and the need for further ratification of the UPC Protocol on Provisional Application (the Protocol) by UPC participating states before the practical arrangements can begin to be made for the new courts, such as the appointment of judges. The timetable looked even more hopeful when, subsequently, the UK general election was announced for June, implying an inevitable and resultant delay in the progress of any UK ratification until after the election at least. On 7 June, the UPC Preparatory Committee announced that the December start date could no longer be maintained.  The Preparatory Committee says that it is monitoring UPCA ratification and participation in the Protocol continuously in order to be able to establish a timetable for a start date as soon as possible.

UPC Protocol on Provisional Application: Before final ratification of the UPCA, participation in the Protocol is needed in order that UPC judges can be appointed and the practical arrangements put in place for the new courts. This will allow the provisional application of the institutional, financial and administrative provisions of the UPCA and will enable the necessary legal and practical arrangements to be made in contemplation of the establishment of the UPC. However, for the Protocol to come into effect, 13 signatory states - which have signed the UPCA (and which must include France, UK and Germany) and have ratified the UPCA or informed the depositary that they have received parliamentary approval to ratify the UPCA - must have signed and ratified, accepted or approved the Protocol (in accordance with Article 2(2) of the Protocol) or declared by unilateral declaration or in any other manner that they consider themselves bound by the provisional application of the articles of the UPCA mentioned in Article 1 of the Protocol. These Articles cover, inter alia, the establishment of the UPC, the Registry, the Mediation and Arbitration Centre, the training and appointment of judges, and the provisions allowing for the UPC Statute and Rules, legal aid, remuneration of judges, the setting up of local or regional divisions, and the establishment of the pool of judges. The UK has signed the Protocol, along with the other 2 mandatory signatories, and the Protocol is close to coming into effect, although a few more signatories and ratifications are needed. The Council of the EU has a page listing signatories to the Protocol. The UK will still need to pass legislation (via statutory instrument) to ratify the Protocol as will some other signatories. 

At its May meeting, the EU Competitiveness Council acknowledged that there were a few countries holding up the Protocol but that it could be done before the summer break and if so the UPC might still be on track for a December opening. The Preparatory Committee's announcement on 7 June indicates that this is not now expected to happen.

UK ratification of the UPCA: The UK's representative at the Competitive Council meeting in May noted that the UK's ratification of the UPCA itself would not occur until the next Parliament, but that the intention of the current Government was to ratify it. If the UK ratifies the UPCA, without amendment, and subsequently leaves the EU, any divisions of the UPC in the UK will have to cease operating. The transitional consequences of this are matters of detail to be negotiated as part of the UK’s exit negotiations. If the UK cannot continue to take part in the UPC beyond Brexit, it will become one of the European jurisdictions where separate patent protection will need to continue to be sought following the introduction of the new UPC/UP system. 

For a detailed insight into what this would mean for the UPC and intellectual property rights in general, in the UK and across Europe, please see our briefing following the Government's announcement on ratification here

The latest version of the Draft Rules of Procedure of the UPC were published on the UPC Preparatory Committee website on 10 April 2017 - here. It is understood that these are the final version, although a finalised format has not been published.

For more on the UPC and unitary patent system, see our Hub here: www.hsf.com/upc.


 

UK General Election may delay UK ratification of the UPC Agreement and hence the commencement of the UPC and UP system

20 April 2017

The UPC Preparatory Committee's announced start date for the UPC of 1 December 2017 now looks in doubt as the UK general election will likely postpone the UK's ratification of the UPC Agreement, on which the commencement of the UPC is dependant. A 2018 start date appears more probable, barring any delay by Germany which must also ratify for the UPC (and UP) to go ahead.

For more on this and detail on the impact of the UPC and UP system see our UPC hub


 

UPC Preparatory Committee releases an update to the 18TH Draft of the UPC Rules of Procedure

12 April 2017

The UPC Preparatory Committee has released an updated version of the 18th draft of the UPC Rules of Procedure (with the amendments being dated 15 March 2017), which can be accessed here

Subject to formal adoption, we understand that this update may represent the final version of the UPC Rules of Procedure.


 

UPC Preparatory Committee holds final meeting at which it signals its readiness to move to Provisional Application Phase and Germany passes bills necessary to ratify the UPC Agreement

21 March 2017

The UPC Preparatory Committee held its final meeting on 15 March at which it agreed a final collection of legal, HR and financial documents and confirmed that the provisional application period could commence once the final Signatory States had acceded to the Protocol on Provisional Application.  The Committee was confident this would be met in time to allow provisional application to commence at the end of May 2017 in order to allow for all the practical preparations to be made for a 1 December 2017 start for the UPC. 

Matters such as the recruitment of judges, the IT and case management system and other practical arrangements for the opening of the Court and its local and central divisions are in progress, but will be dealt with by other teams.

Final amendments to the Rules of Procedure for the UPC were agreed and a full publication was promised on the UPC Preparatory Committee site shortly.

Patentees should note that the Committee again confirmed its expectation that the sunrise period for opt-outs of European patents from the jurisdiction of the UPC will start in September 2017.  A review of all EPs held should now be instigated, if not already in progress, to determine which may be candidates for opt-out. 

The Preparatory Committee acknowledged that the timetable of the entry into force of the UPC Agreement (and hence the UPC and unitary patent system) "is subject to change given the reliance on national governments to accede to the Protocol on Provisional Application",  however regular updates were promised on its website.

Germany has now passed draft legislation to enable it to ratify the UPC Agreement and to provide corresponding amendments to German patent law.  The UK is expected to ratify the UPC Agreement by the end of April 2017. 

For more information and comment on what patentees and licensees should be doing now, see our e-bulletin of 21 March here.


 

Italy ratifies the UPC Agreement – only Germany and the UK needed to ratify before the UPC can commence

20 February 2017

On 10 February Italy lodged its instrument of ratification of the Unified Patent Court Agreement (UPCA) with the EU Council.  Italy is the twelfth state to ratify the UPCA (for details of other ratifications see the UPCA section of our Unified Patent Court (UPC) and unitary patent (UP) Hub here). For the UPCA to come into force at least 13 contracting states must ratify including 3 specific ones: France, Germany and the UK. France has already ratified. The UK has announced that it will ratify (see below) and Germany is said to be holding on until August so that the 4 month lead-in period which applies once there is sufficient ratification can commence in time to allow a 1 December 2017 start date for the (under Article 89 UPCA, the agreement enters into force on the first day of the fourth month after the deposit of the thirteenth instrument of ratification).


 

UPC in place by December 2017 and opt-out starting in September – says Preparatory Committee

19 January 2017

The UPC Preparatory Committee has announced its expectation that the UPC will be operational by December 2017 with a sunrise period for opting out patents from its jurisdiction from September 2017.  However, it does sound a note of caution, stating that the "timetable is conditional and provided with the clear disclaimer that there are a number of factors that will dictate whether it is achievable. The most important factors in meeting these dates is the necessary ratifications of the UPCA and accession to the Protocol on Provisional Application. If these are not achieved the time-plan will be disrupted".

Teresa May's rejection of the CJEU in her Brexit speech on 17 January 2016 that the UK will make the UK's participation in the UPC post-Brexit difficult. See the comments by Mark Shillito, our Head of Intellectual Property, in this article "Brexit means ditching the CJEU, May makes clear", published in the Law Society Gazette on the same day. 


 

BREXIT – WHAT IP ISSUES TO CONSIDER NOW

05 January 2017

We set out our thoughts and predictions upon how protection and enforcement of IP in the UK may be impacted once Brexit arrives.  We have also suggested some immediate action points for consideration in the weeks or months to come, prior to Brexit, to ensure that your business is best protected prior to any changes.

READ MORE >


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