Changes to Ownership of UK Design Right
August 05, 2014
This is the second of a five part series looking at the effect of the Intellectual Property Act 2014 on design law in the UK. In this part we consider the changes to the ownership of UK design right.
The owner of the UK design right in a product resulting from a commission will now be the designer rather than the person who commissioned the work. This brings the ownership provisions in UK design law into line with existing provisions in European design law. The new provisions apply to both UK registered and unregistered design rights. The implication here is that an assignment should be in place transferring the ownership of any design right in a product from the designer to the person who commissioned the work. Otherwise, by default, the person who actually created the design (for example an independent designer) would own the design right and not the person who commissioned the work. It should be noted that employers continue to own the rights to any design produced by employees as part of their job and under the terms of their employment contract. The new provisions apply to all designs created on or after 1 October 2014, unless the design is created under a contract which existed prior to that date and which also specifies who owns the design. In that case, the contract (and its ownership provisions) will still apply. In part three of this series we shall consider the implications of changes in respect of prior use of a design.
If you have any questions concerning design law changes, please get in touch with your usual contact at Swindell & Pearson or Simon Foster at [email protected]. Simon is based in the East Midlands, at our head office in Derby.