Patents Designs

Implications of the Intellectual Property Act 2014 to your Business

November 26, 2014

With certain provisions of the Intellectual Property Act 2014 having come into force in October, Robert Sales of Swindell & Pearson looks at what practical steps could be taken in response to some of the key law changes relating to design and patent protection.

Design ownership of commissioned works

The owner of UK registered and/or unregistered design right in a product resulting from a commission will now be the designer rather than as previously provided, the person who commissioned the work. The implication here is that a written 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 or their employer, would own the design right and not the person who commissioned the work.

Prior use of a design

The holder of a UK registered design will not now be able to take action against a person who had in good faith used the design, or made serious and effective preparations to do so, before the registration of the design. The prior user can continue to exploit the design, but only for the same original purpose, i.e. the design cannot be applied to different articles beyond those already planned for. It is therefore highly advisable to file applications for registered designs as soon as possible, and particularly in fields which are rapidly evolving, to minimize the risk of prior user rights.

Intentionally copying a registered design is a criminal offence

The intentional copying of a registered design will now be a criminal offence. The Act introduces a criminal offence for the intentional copying of a UK or Community registered design. To be found guilty someone must intentionally copy a design, without the consent of its owner, whilst knowing, or having reason to believe the design is registered. Criminalising intentional copying of registered designs may act as an additional deterrent to potential infringers, thereby providing a further reason for seeking registered design protection, and indicating that designs are protected by registration. It is intended that these additional rights will particularly be usable against parties producing and dealing with counterfeit products.

The scope of protection provided by UK unregistered design right has been narrowed slightly

Previously a UK unregistered design was defined as “the design of any aspect of the shape or configuration, whether internal or external, of the whole or part of an article”. The phrase “any aspect of” had previously been used to claim that very small parts of a design were protected by UK unregistered design right. The phrase “any aspect of” has now been removed from the definition of a design, the effect of this law change is likely to be that the scope of protection provided by UK unregistered design right is narrowed. Ultimately, it would be for a court to decide what this definition change means in any particular case. Again this may mean that registered design protection should be sought to protect particular parts of a design.

Changing the liability regime for innocent infringement of a UK registered design

Owners of UK registered designs can now recover any profits made by people that unintentionally and innocently infringe their rights. The innocent infringer will still not though be liable for damages. An Innocent infringer of a UK registered design is a person who does not know or suspect that the UK registered design exists. Previously, if the infringement of a UK registered design was committed unintentionally, an infringer could avoid financial penalties, but this is now less likely to be the case. This provides a further reason for seeking registered design protection.

Marking patented products

Previously, to avoid a potential defence of innocent infringement, which may result in a patent holder not being awarded financial remedies in the event their patent is infringed, patented products needed to be marked with the word “patent” or “patented” together with the number of the patent. Under the new provisions it is now acceptable to mark the product with a web address, provided that the webpage clearly associates the patent number with that product. Removing the need to mark patent numbers directly on the product may reduce the burdens and costs for businesses and individuals who own patents, and will make it easier for the public to access up-to-date patent information in relation to a product.

New powers to provide opinions

The Act also reforms the Patents Opinions Service (POS). The POS allows third parties to request a non binding opinion from the IPO regarding infringement and/or validity of a patent. Under current law, if the Intellectual Property Office (IPO) gave an opinion that an existing patent is invalid, it falls to a third party to initiate revocation proceedings which are often costly and lengthy proceedings. The Act allows the IPO to, in very clear cut cases, start the revocation proceedings on behalf of the third party. This therefore potentially increases the advantages for third parties of seeking a patent opinion if they believe another party’s patent is invalid. Previously they may have been kept out of the market by invalid patents where it would not have been commercially appropriate or they do not have the resources to challenge the patents. A designs opinions service is also due to be implemented in 2015, which should help parties to avoid or resolve disputes concerning the validity and/or infringement of both registered and unregistered designs.

This service is likely to have many similarities with the POS. If you have any questions concerning any of the above points please get in touch with your usual contact at Swindell & Pearson Ltd or at [email protected].