Legislative Reform Order and IP Act: law changes 2014

Designed to modernise IP law and to support UK businesses in the protection of their IP rights in the UK and abroad, the legislation provides a plethora of legal changes. Some are minor and administrative and others more significant, especially from a right holder's or third party's perspective. The main changes are discussed briefly in this article (where 'clauses' refer to the clauses of the IP Act 2014).

Registered designs

Criminal sanctions (clause 13)Unquestionably, the most notable change is the introduction of criminal sanctions for wilful copying of registered designs. These sanctions are now aligned with the corresponding provisions for copyright or trade marks.

The intention here is not to catch parties who have inadvertently copied a registered design (and safeguards are provided to that end) but only those who deliberately copy the design.

Prior use (clause 7)

Prior use provisions will now be introduced which are somewhat similar to those of patents. They will allow someone using in good faith a design which is subsequently registered by another person, to continue using this design with some protection from infringement proceedings.

As for patents, the 'right to continue' remains a narrow right as the prior user will only be able to continue using the same design and alterations to the design would not fall within the exclusion.

Innocent infringement (clause 10)

Remedies for innocent infringement have been made more consistent for registered UK and Community designs.

EU design and copyright (clause 5)

A person who uses a valid Community (EU) registered design with permission cannot be sued for infringement of copyright arising from the design.

These provisions are now in line with those for UK registered designs and should reduce the complexity for potential disputes.

Hague Agreement (clause 8)

The UK will now be able to join the Hague Agreement as a member in its own right. Previously, the UK could only be included for an international design registration through the Hague system if EU-wide coverage was opted for.

Appeals (clause 10)

A new route for appealing design decisions from the UK Intellectual Property Office (UKIPO) has been provided, namely by appealing to an 'appointed person'.

The aim is to make design appeals more accessible, in particular to SMEs by providing a less formal route (than via the courts).

Registered and unregistered designs commissioned works (clauses 2 and 6)

This change is made to both registered and unregistered design rights and will align the ownership provisions for UK designs with those for the corresponding EU registered and unregistered design rights.

For commissioned works, the default owner of a UK design will now be the designer, not the commissioner.

While commissioners were previously automatically the owner, with the new legislation in place, if they wish to own the design rights, they should now ensure that the contractual agreement between them and the designer clarifies that they are the owner of the relevant design rights.

Opinions (clause 11)

Anyone will be able to apply for the UKIPO to issue non-binding opinions relating to designs.

The intention is to provide relatively inexpensive tools for rights holders and third parties to assess the strength of their cases and to make informed decisions before potentially starting litigation.

Unregistered designs

Scope (clause 1)

The definition of scope of unregistered designs has been narrowed slightly and the Copyright, Designs and Patents Act 1988 now recites "In this Part "design" means the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article)".

The intention is that the entire design or a part of the design would still be protected, not trivial features of the design.

Private use (clause 4)

Exceptions from infringement for private use of an unregistered design have now been introduced. These exceptions relate to:

• private non-commercial acts;
• use for experimental purposes;
• reproduction for teaching purposes or purposes of making citations; and
• use on non-UK registered ships or planes.

Patents

Webmarking of products (clause 15)

Patent owners can provide a public notice of their patent rights by marking their product with the relevant patent number. Patent owners will now be able to mark a product with a web address to a web page which identifies the relevant patent(s). This should make it easier for rights holders to provide up-to-date information and for competitors to identify relevant patent rights.

The UK government has issued a guide to webmarking of patented products on their website: http://dycip.com/patentwebmarking

Medicinal product assessment (legislative reform)

This order clarifies that the 'experimental purposes' exception to infringement of section 60(5)(b) of the Patents Act 1977 includes medicinal product assessment.

The aim is to allow companies to carry out testing or other activity on a patented medicinal product, either for providing information to the regulatory authorities giving out marketing authorisations, or to supply information for health technology assessments.

Opinions (clause 16)

The UKIPO will now be able to deliver opinions on a wider range of issues and will have the power to revoke a patent if it finds that it is clearly invalid. It is expected that this power to revoke a 'clearly invalid' patent will only be used in clear-cut cases but it remains to be seen where the UKIPO set this threshold. Safeguards have however been put into place: patent rights holders will be given the opportunity to defend their rights by providing counter arguments and/or amending the patent.

Unified Patent Court (clause 17)

This clause will enable the Unified Patent Court (UPC) to be brought into effect in the UK when appropriate.

To follow development of the the UPC and unitary patent please visit the UPC section of our website: www.dyoung.com/unitarypatent

IP Act 2014

The IP Act 2014 includes additional measures such as an exception under the Freedom of Information Act 2000 for pre-publication research information.

Useful links

The act can be read in full at: http://dycip.com/ipact2014

The Legislative Reform (Patents) Order 2014 can be found at: http://dycip.com/iplegislation