Review of the new UK Intellectual Property Act 2014

The Act will come into force between October 2014 and the end of 2015. It specially deals with product design, 3D Printing, fashion design, furniture or jewelry design. The Design Right protects the internal or external shape: two-dimensional designs or surface patterns; or configuration of an original design. This right will give protection for a period equal to the earlier of: 10 years from the first marketing of articles produced from the design; or 15 years from the date of creation of the design. It should be noted however, that during the last 5 years of this protection period the design is subject to a license of right entitling a third party to be granted a license to make and sell products copying the design. Typically design right protects commercially produced designs and not ‘artistic’ designs which will generally attract copyright protection.

The Act helps to speed the granting of patents by allowing the UK Intellectual Property to send patent information to other global offices. The goal is to reduce paperwork and to speed up the process for which patents are granted. This is a major help to business’s hoping for quick turnarounds on their patents. The law contains multiple provisions on how to solve patent design disputes.

The law synchronizes UK law with that of EU law in regards to IP law. This will provide consistency that will aid all businesses that do business in the EU. The laws regarding unregistered design right have been greatly simplified so as to clarify which aspects of the design are covered. These measures will also help bring a timely resolution to conflicts as to avoid long drawn out litigation. Although it will take a couple of years to see what impact these changes have, it is still promising that the UK was able to pass this law and hopefully it serves as a building block to provide further protection for companies. This comes at a time when the United States Congress could not come to an agreement for a new IP Bill. Hopefully, seeing a major world leader pass significant IP legislation will inspire Congress to also pass new IP legislation. The purpose of the new design law are to; simplify design law and allow the intellectual property framework to better support innovation; improve the enforcement of designs and understanding the design rights of others, and improve the processes associated with the design framework.

The law provide various changes like the initial ownership position in respect of registered designs is also changed, as for unregistered designs i.e. the designer will be the initial owner unless otherwise agreed, rather than the commissioner. The Act expands the exception from copyright infringement already available to registered UK designs to registered community designs, i.e. so that an authorised user of a UK or registered community design cannot be sued for infringement of associated copyright. Applicant does not need to be the owner of the design: The Act removes the requirement for the applicant of a registered design application to be the proprietor of the design. The Act makes intentional copying of a registered design a criminal offence. This applies to acts which take place in the course of business and the penalties for such an offence are now a fine or prison sentence. Again, this brings the penalties into line with sanctions for trademarks and copyright infringement. The Act gives Trading Standards officers similar powers of enforcement for design offences as those already available to them in respect of copyright and trademarks.

The Act grants power for the Secretary of State to implement the Geneva Act of the Hague Agreement in the UK, this means that international registration procedures will be available for UK registered designs. At present UK designers can only access the Hague registration process via the EU community design registration. New good faith exception to infringement: The Act introduces a right of prior use, allowing a third party who has acted in good faith to continue to use a registered design which is subsequently registered by another. The aim of this amendment is to provide an entitlement to limited exploitation in respect of uses already made.

One fundamental change to existing law is that the Act changes the deemed first owner of unregistered designs so that unless otherwise agreed, the designer will be the owner of the designs and not the person who commissioned the designs. Historically the first owner has been the commissioner. This amendment will bring design law into line with UK copyright law. The Act clarifies the definition of design so that to be original a design must not be commonplace in a ‘qualifying country’ rather than in the ‘relevant design field’, which caused confusion as to its geographical coverage. The definition of Unregistered Design Right has been amended to limit the protection for trivial features of a design. The Act has amended the provisions related to qualifying persons who can claim unregistered design right so that those who are economically active in the EU and other Qualifying Countries (as set out in the CDPA) have protection.

The Act extends the exceptions for infringing unregistered designs, so that acts done privately for no commercial purpose or for teaching will not infringe unregistered design rights. A similar exception applies for acts done for experimental purposes, this is to encourage innovation. The Act aligns the financial liability provisions for innocent infringement with those provisions under the Community Design Rights legislation. The Act allows a new route of appeal against Intellectual Property Office (IPO) decisions via an Appointed Person instead of appealing via the courts, such root already exist for trade mark appeals. This amendment is intended to allow appeals be cheaper and less time consuming. The Act clarifies that proceedings for an offence committed against a partnership must be brought against the partnership. The Act has added a new exemption to the Freedom of Information Act for information obtained in the course of or derived from a continuing programme of research, a report of which is intended for future publication, where disclosure would prejudice the report.

The Act provides for a voluntary non-binding opinion service to be introduced by the IPO which is similar to the opinions service which currently exists in respect of patents. There is an obligation on the secretary of state to report on the IPO’s activities each year to show how innovation and growth have been supported in the UK. The Act provides for automatic extension of certain copyright provisions of the CDPA to materials of, and works first published in other countries i.e. it recognizes certain foreign works.

It is expected that the Act will benefit many UK businesses and design professionals and make obtaining international registrations easier. If you are a designer or design company you should be aware of the implications of the new Act to your business. If you are commissioning a design, it is important to ensure that you have an appropriate agreement in place with the designer to ensure that the design rights are owned by you. It is advised that the right holders should review their standard terms and conditions and, where necessary, amend them to ensure that appropriate provisions are included. With £16 billion being contributed to the UK economy by intellectual property investment each year, you can see why modernising UK intellectual property law for the digital age is an important object of the UK Government. Whether the new Act achieves its objectives only time will tell us.

Source:

1. Effects of New UK IP Law- Tyler King- http://www.ipbrief.net/2014/06/30/effects-of-new-uk-ip-law/

2. Laura Harper (http://www.shoosmiths.co.uk/client-resources/legal-updates/The-new-Intellectual-Property-Act-2014-7916.aspx)

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