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Important Changes in UK Design and Patent law

Background

The Intellectual Property Act 2014 (the “Act”) has introduced changes to design and patent law in the UK intended to implement recommendations arising out of the Hargreaves Review of Intellectual Property in 2011. The intention behind the new legislation is to support innovation, to help business, particularly SMEs, understand, exploit and protect IP rights and to reduce costly litigation. To this end, the changes are meant to be of practical use, and should make it easier to identify and enforce design rights.

D day – 1 October 2014

On 1 October 2014 this new legislation relating to designs and patents came into effect. Other changes included in the Act, such as the creation of an impartial, non-binding opinion service and extending the Hague international design registration system, are not expected to come into force until 2015.

Key changes

Design ownership

  • Any commissioned UK registered or unregistered designs are owned by the commissioner and not the designer. From 1 October 2014 this was reversed and the rights to all designs created on or after this date will belong to the designer, not the person who commissions the design, unless there is a contract in place which transfers ownership from designer to commissioner. This brings the law into line with the position with regard to Community registered and unregistered designs.

    Action point – ensure that a commission agreement is in place expressly to transfer ownership from any self-employed/independent designer to the commissioning business.

New criminal offence – intentional copying

  • The Act introduced a criminal offence for the intentional copying of a UK or a Community registered design in the course of a business. The offence, which carries the penalty of a fine and/or prison sentence of up to 10 years, will be committed by intentionally copying a registered design without the consent of the registered owner of that design. An individual will be guilty of this offence if the copy made differs only in immaterial details from the original and the copier knows, or has reason to think, the design is registered. A separate offence will be committed by anyone similarly dealing with such a copied product. Although it will be a defence to know, or reasonably believe, that the design registration is invalid or is not infringed, the implications of this, both for business and designers, are significant.

    Action point – the criminal penalty is likely to act as a deterrent. For all businesses, if there is any suggestion that a new product may infringe a registered design, a “head in the sand attitude” may prove disastrous; in these circumstances, seek professional advice and always keep detailed records of the advice. For designers, this new offence is an additional tool to ensure their work is not copied, but only of course, if the design is registered. The owners of registered design should mark their products, packaging and promotional materials with details of the registered design (i.e. registry name and design number). This will make it more likely that a third party will be held to know the design is registered.

Prior use of a design – limited protection

  • The Act provides limited protection for any business which starts, in good faith, to use a design but subsequently finds it has been registered by someone else. In these circumstances the business may continue to use the design, but only for the original purpose.

    Action point – for any business using a design in good faith, this offers limited protection, but again, professional advice should be obtained to avoid overstepping the fairly narrow permissions.

Technical changes

  • In relation to UK unregistered design right, the Act has made a number of technical changes:
    • unregistered design right will be available to protect the design of the shape and configuration of an article, as opposed to extending to any aspect of its design. As a result “cropping” a design to tiny parts of the whole, to support an infringement case will no longer be possible.
    • the test for originality is clarified and what is commonplace in a specific area will no longer be protected.

    Action point – This represents a substantial change in design law and a weakening of the protection afforded by unregistered design right. This makes it all the more important for businesses to register designs of the whole and parts of a product where they are able to do so.

Private use – unregistered design

  • Mirroring the position for registered designs, the Act introduces a defence for anyone accused of infringing an unregistered design for private (non-commercial) acts, experimental purposes and teaching or making citations.

Structural reform – 2015

  • As part of on going structural reforms, the Act contains provisions to offer a non-binding impartial opinion service and to enable design owners to apply for registered design rights in the UK and elsewhere using the international registration system. However, such measures are not likely to be implemented before 2015.

Patents

  • In addition to legislation on design rights, the Act provides specific technical changes in connection with patents. In particular, the legislation has brung supplementary protection certificates for medicinal products within the remit of the Patent Opinion Service so that opinions may be requested in connection with rights under these. The Act also introduced the concept of “virtual product marking” as an alternative method for patent owners to give notice of their rights. In place of the specific number, a patent owner may mark the product with an internet link which directs the user to a website which sets out the specific patent number(s) for the relevant product. This will be of practical use to a patent holder since it is easier to update information on a web page rather than having to amend packaging. Also, by making information accessible, it will be helpful to third parties.

    Action point – this provides a practical administrative advantage for businesses which can now use a web link to direct third parties to a website with information which can be updated from time to time.

If there are any issues you wish to discuss further, please contact Roy Crozier or Susan Hall in our intellectual property team.