The Intellectual Property Act 2014 (IPA 2014) came into force on 1 October 2014. It aims to modernise copyright law and help designers and patent-holders protect their IP. It is hoped that the changes will support business innovation and bring clarity to the scope of protection afforded by design rights. Many of the changes will be of particular interest (and benefit) to small and medium size enterprises.
The most significant changes relate to patents and design rights.
Patents
1. Marking Products with a Link
Prior to 1 October 2014, patented products had to be marked with a specific patent number to reduce the possibility of a potential infringer claiming that they were not aware of the infringing act. Section 15 IPA 2014 gives patent-owners the option to mark their products with an internet link which takes the user to a website which details the specific patent number associated with the patented product.
2. Unified Patent Court (UPC)
In future, inventions may be protected in up to 25 EU countries by way of a single unitary patent. The UPC will be a new specialist patents court with competence to deal with the new unitary patent as well as European bundle patents. The IPA 2014 lays the groundwork for the introduction of the UPC in the UK. London is to be one of the three main centres of the new Pan-EU Court together with Paris and Munich.
3. Extension of the IPO Opinion Service
Launched in 2005, the IPO Opinion Service helps businesses resolve patent disputes by providing a quick and affordable assessment on the question of validity or infringement of a patent. An opinion, although non-binding in nature, can assist in resolving a dispute before it escalates into full litigation before the courts. An opinion costs £200. The success of the Opinion Service means that the range of issues on which opinions can be issued is being extended. In addition, the Intellectual Property Office will be able to start the process of revoking a patent if an opinion has been issued indicating that the patent is not new and inventive. The aim is to provide a faster, cheaper service for businesses facing patent disputes.
Design Rights
1. Criminal Offence for Copying
Section 13 IPA 2014 creates a new criminal offence for infringement of registered designs. It is now an offence for a person in the course of a business to intentionally copy a registered design so as to make a product exactly to that design or only immaterially different. The person must know or have reason to believe that the design is a registered design. There is a similar offence applicable to parties offering, marketing, importing or using, or stocking such products in the course of a business. The offence is punishable by imprisonment of up to 10 years and by fines, and applies to both UK and EU Community registered designs.
2. Ownership
Since first introduced in 1989, unregistered designs commissioned by one party from a third party designer have been owned by the commissioning party unless there is an agreement that provides otherwise. Section 2 IPA 2014 changes this so that for registered designs and unregistered designs) the first owner of the work will be the designer, not the commissioner, unless there is a contract which provides otherwise.
3. Introduction of Opinion Service for Designs
Section 11 IPA 2014 allows for regulations to enable persons to seek a non-binding opinion from the IPO as to whether a registered design is unoriginal. It is intended that this will operate in a similar way to the existing Opinion Service for patents and aims to give parties an indication of the strength of their position before embarking on costly design rights proceedings. The Opinion Service should be finalised and implemented next year.
4. Prior User Rights
The IPA 2014 offers some limited protection to those who, in good faith, start to use a design, but who subsequently find someone else has registered that same design before they have done so. If these circumstances arise, a user may continue to use the registered design in the way they were already using it before it was registered by another, but expanding their use of the design beyond its original use would be infringement.
Summary
The IPA 2014 itself does not bring about earth-shattering changes to intellectual property law. Rather it paves the way for greater change in future by laying the groundwork for the Opinions Service for design rights, and the introduction of the UPC.
SMEs are the entities most likely to benefit from the changes. The extension of the patents opinions service and the prospect of an equivalent service for design rights both aim to reduce the costs of IP litigation by providing a quick and inexpensive indication of the outcome of a dispute. Equally, the creation of a criminal offence for infringement of a registered design means businesses will be able to report anyone selling copies of their designs to the police, as well as pursuing their own action. The main point for businesses to be wary of is the fact that any designs commissioned to a third party will belong to the third party designer unless otherwise expressly agreed.
In summary, to reduce the risk of IP infringement and increase the scope of IP protection, the position for businesses remains much the same as it was before the Act: businesses should always carry out thorough research on existing designs and patents, register new designs as soon as possible and come to a clear written agreement about ownership of the rights in a design before going any further.
This article was written by Paul Herbert, Partner with the assistance of Trainee solicitor Elizabeth McClenan.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
