Intellectual property bill receives royal assent
15 May 2014
The Intellectual Property Bill received royal assent on 15 May 2014, and will come into force as the Intellectual Property Act 2014. Many of the new measures are expected to take effect in October 2014, with the remainder entering into force by the end of 2015.
Designs are a key focus for the new legislation. The Intellectual Property Act 2014 implements new measures aimed at improving protection for designs. The key changes for design protection are:
- A modification of the scope of protection for UK unregistered designs, such that unregistered design protection will apply to the whole or part of the design of an article, rather than to “any aspect” of the design of the whole or part of the article. This change is intended to make it easier for third parties to assess what is or could be protected by unregistered design right.
- The introduction of provisions allowing private or experimental use of designs protected by UK unregistered design right.
- A change to the provisions regarding ownership of UK registered and unregistered designs, such that the rights in commissioned designs belong to the designer rather than the commissioner. This change will be of particular importance to organisations that outsource design work, and will require new agreements to transfer the rights in commissioned designs to the commissioning organisation.
- Accession of the UK to the international “Hague system” for registration of designs in many countries of the world via a single application.
- The introduction of criminal penalties for copying registered designs, to deter flagrant copying.
- A change to the provisions regarding qualification for UK unregistered design rights based on first marketing of an article in the EU (or other country providing reciprocal protection to UK designers), such that the qualification depends on the country in which the first marketing takes place not the nationality or residence of the marketer. This change will mean that products first marketed in the EU may benefit from UK unregistered design rights regardless of the nationality or residence of the marketer.
- The introduction of a Designs Opinion Service, allowing rights holders and third parties to seek a low-cost non-binding opinion on issues of design infringement from the UK Intellectual Property Office, to help to resolve design disputes.
- Easier online access to detailed information about UK registered designs.
These changes will certainly benefit independent designers and owners of registered designs, but may also impose additional burdens on organisations that rely on outsourced design services. Our Designs Specialist Practice Group will be pleased to assist you with any questions on the changes to design law.
Many patent holders will also welcome this new legislation, as a key part is the implementation of the Unified Patent Court agreement, helping to pave the way for the long-awaited unitary EU-wide patent.
Patent holders will also be pleased to learn that the new legislation also implements provisions allowing patent products to be marked with a link to a website listing the patents that are relevant to the product. This facilitates the process of marking patented products, and allows the relevant marking to be updated quickly, easily and cheaply when new patents are granted or when patents cease.
Additionally, in an attempt to improve the efficiency of the patent process both in the UK and elsewhere, the legislation includes provisions permitting the UK Intellectual Property Office to share information about unpublished patent applications with other patent offices on request. Applicants’ interests are protected by specific provisions to ensure that the confidentiality of any information shared between offices will be maintained.
Matthew Howell and Richard Worthington
This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Withers & Rogers LLP, May 2014