On 14 May 2014, the new UK Intellectual Property Act (“the Act”) received Royal Assent. According to the UK Intellectual Property Office (IPO), the Act has the objective of “modernising” UK Intellectual Property law to help businesses better protect their IP rights in the UK and abroad. The Act amends aspects of the law mainly in relation to designs and patents. The Act will be brought into force by Order of the Secretary of State, probably in October of this year.
The Act provides new protections for designers, as well as clarifies a number of uncertainties in the current design legislation. It also criminalises design infringement and thereby brings design rights into line with trade mark and copyright protection. Changes to design ownership regarding commissioned work mean that third-party commissioners will have to carefully review their contractual provisions when commissioning new work.
The key changes include:
UK unregistered design right
- The Act amends the definition of unregistered design right to help reduce uncertainty over which aspects of a design attract protection and to limit the protection for trivial features of designs;
- The default owner of a design will be the designer not the third-party commissioner. Under the current legal framework, the commissioner would automatically own the design commissioned by him. The change will bring UK design rights into line with Community designs and copyright law and is therefore a welcome clarification. However, third-party commissioners of design work must ensure that rights are assigned to them in the contract of commission or future use or amendment of the design could be severely limited, even though they have paid for the creation of the design in full;
- The Act extends (and simplifies) the law on who may own a UK unregistered design right, to give protection to anyone of any nationality provided that, broadly speaking, they live or are economically active in the EU;
- Certain acts conducted privately, such as for experiments or for teaching, will not amount to an infringement of an unregistered design. This is the same as the position in copyright and harmonises UK and EU design law .
Registered Community Designs (RCD)
- The Act provides that those who use, with permission, a RCD (which is valid in the UK) cannot be sued for infringement of associated copyright, which aligns the law with the position regarding use of UK registered designs;
UK Registered designs
- The Act introduces criminal penalties for intentional copying of a registered design in the course of business where the copy differs only in immaterial details from the original and the copying is done without consent and in the knowledge, or with reason to believe, that the design is a registered design. The creation of this offence brings design law more in line with trade mark and copyright law both of which have criminal offences for certain types of infringement. It remains to be seen how frequently this new offence will be used but design owners are likely to welcome its introduction as strengthening the tools at their disposal to protect their registered designs more effectively;
- The Act changes the law on default ownership of a commissioned design, as for unregistered design right (see above);
- Third parties, acting in good faith, will be permitted to continue to use a design that is subsequently registered by someone else;
- The Act introduces a power to enable the UK to join the Hague international design registration system in its own right. If this power is used, designers will be able to make one international application to obtain registered design protection in a number of territories, without the risk that protection across all of those territories will be lost if the application is centrally attacked;
- The Act also creates a new “Design Opinion Service” run by the UK IPO. This service will allow the owner of a registered design, or any other person affected by a registered design, to request an opinion from the IPO on the validity of the registration or whether it infringes, or is being infringed by, another design. This will help design owners to assess the strength of their claim for design infringement before going through formal and costly legal proceedings.
- The Act creates new powers for the UK to implement the Unified Patent Court Agreement. This is a pre-condition for the introduction of a single patent across 25 member states of the European Union. This will give businesses a more streamlined and cost effective option of protecting their inventions across Europe. The Unified Patent Court, part-hosted in London, will process legal disputes regarding the new Unitary Patents, as well as European patents, which are currently available from the European Patent Office;
- The Act extends the scope of the UK IPO’s current non-binding Patents Opinions Service;
- The UK IPO will be able to share information on unpublished patent applications with other national patent offices. This will help clear backlogs internationally.
The Act implements the reforms to the design IP framework which flow from the Hargreaves review of Intellectual Property and Growth in 2011. Although the new measures are likely to come into force from October 2014, the implementation of the Design Opinion Service is expected to be delayed until 2015.