New IP regime coming soon
The changes are contained in the Intellectual Property Act 2014, which is expected to be fully implemented by late 2015.
The Intellectual Property Office (IPO) says that the new measures are designed to help UK businesses “better protect their IP rights in the UK and abroad” and encourage innovation and economic growth.
The Act also implements reforms to the design IP framework stemming from the government-commissioned Hargreaves review of Intellectual Property and Growth in 2011. Changes it will introduce relating to designs include:
- making infringement of a registered design a criminal offence, in certain circumstances
- bringing the rules on UK design ownership into line with those of the European Union. For commissioned designs, the designer – not the commissioner – will be the owner in all cases
- exempting certain acts from being an infringement of a registered design, including those related private activities involving teaching or experimentation
- allowing third parties, acting in good faith, to continue to use a design that is subsequently registered by someone else
- ensuring that those who use, with permission, a Registered Community Design – which protects a design in the European Union, including in the UK – cannot be sued for infringement of associated copyright
- introducing a voluntary, non-binding Design Opinions Service to give those involved in potential designs litigation an impartial IPO view on the strength of their case
- amending the definition of unregistered design right to help reduce uncertainty and limit protection for trivial features of designs.
Changes to the law around patents include:
- introducing the option of marking a product with a web address, instead of the patent number and country of the patent. The web address must be of a webpage that clearly sets out the relevant patent number
- expanding the IPO’s Patent Opinions Service so that it can give non-binding opinions on a wider range of issues around patent validity
- allowing the IPO to share information on unpublished patent applications to improve work sharing between the UK and other patent offices.
The Act will also enable the UK to join the Hague international design registration system in its own right, rather than through EU membership. This will mean that those seeking to protect their designs through the international system will be able to specify relevant EU territories, rather than adopting what the IPO calls an “all or nothing” approach.
Our experts at Royds can provide comprehensive advice on all aspects of intellectual property law, including the implications of the new measures introduced under the Intellectual Property Act. For more information please visit or contact Stephen Welfare or John North.