14 September, 2014

The Intellectual Property Act 2014 - Thoughts

After a myriad of changes in recent years, more specifically in copyright (more on which on this very blog can be found here, here, here and here), one can seem overwhelmed by the constant updates and tweaking intellectual property law has gone through. Just as things have seemed to settle down new changes have to be discussed, although this writer will wholly admit he is a bit late to the punch on this one (as the law was passed over a month ago). Nevertheless, a new piece of legislation has been passed, the Intellectual Property Act 2014, which is coming into force in a matter of weeks, prompting this writer to expand on its potential impact prior to it becoming solid law. The Act focuses on designs and patents, which shall be discussed separately below.

Designs

By far the bulk of the legislation, designs have been needing some revamping and adding to, even though they are quite well protected under the current Copyright, Designs and Patents Act 1988 and the Registered Designs Act 1949. As explained by the UK IPO: "Design law is often considered messy, complex and confusing, and small businesses, who don’t have the time or resources to disentangle it, can lose out. The IP Act will introduce a number of new measures and make some changes to the law in order to make design law simpler, clearer and more robust".

In terms of unregistered designs the Act changes the definition of a design from (in the CDPA 1988) "...the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article" to one which omits the phrase '...any aspect of'. Although a seemingly minute change, the law now reflects in a more concrete fashion what is considered a design and what isn't as a part of the legislation, whereas should you leave the phrase in it makes things a bit more ambiguous. This clearly reflects the legislature's attempt at making things more straightforward, and arguably they have done so, at least on the face of things.

The Act also changes the default ownership of an unregistered design, allowing for the designer to be the owner of their design should it not be made in the course of their employment. The Act omits the phrase "...in pursuance of a commission or" from the previous provision in the CDPA 1988, which clearly gave ownership to those who commissioned the work, even if rights were not intended to be conferred upon the creation of a design. This will undoubtedly lower any confusion or potential issues of ownership, though does lower the protection of the individuals or entities which commission a work unless specifically assigned to them as a part of the commission contract. Ownership is also extended to persons who reside in the European Union (i.e. a qualifying country) at large, or conduct business in the Union regularly. Previously this was much more narrow under the CDPA 1988.

Finally, in relation to unregistered designs, the Act creates exceptions for infringement of a design right for private acts, experimentation and teaching, and over ships and aircraft. This exception is more relevant to the new form of infringement, which was created to protect registered designs.

Nothing gets a designer's creative juices flowing like new legislation
All of the above changes largely apply to registered designs as well, with some minor differences; however the most important, and discussion inducing, change has been the addition of the aforementioned infringement of registered design rights. Should a person or a business copy a design (without the consent of the rights' holder), doing so intentionally and with knowledge or have reason to believe the design is registered, they can be held liable for infringement. The offense also extends to businesses selling, importing, exporting, or uses items which they know or have reason to believe have copied a registered design. Prima facie the offenses seem quite broad, and with a defense of only reasonable belief to the items' registration status, can be potentially quite wide-reaching, especially in relation to businesses selling or exporting goods. An infringer can face up to ten years' imprisonment and/or a fine. This can be said to be a welcomed change, in that designs have lacked a proper offense provision, which trademarks and copyright have had for years.

In the light of the new offense the Act does allow for third parties to use registered designs, should they have done so in good faith and prior to the work's registration. This is assessed under the light of proper measures taken to ensure the design is or was free to use, preventing others from using this provision as merely a guise to protect themselves from infringement.

Finally, the Act allows for design registrants to finally apply for one single design registration within the remit of the Hague Convention registration system, streamlining and enabling quicker, more efficient registration of designs in a more international scale. 

Patents

The Act makes minor, yet important changes to the current patent regime, explained by the UK IPO in better terms: "The IP Act will introduce a number of changes to patent law, which simplify complex areas and make it cheaper and easier to use and defend patents. This will be beneficial for both patent holders and third parties"

The IP Act also adds a provision which will add specific powers allowing for the inclusion of the Unified Patent Court as a part of the patent protection scheme in the UK. This will allow for a much quicker, more unified approach to processing any claims of patent infringement, as it spans the entire 25 Member States of the EU in the scheme. In addition to the Unified Patent Court the Act also allows for the sharing of unpublished patent applications with other patent offices through the UK IPO, which would allow for potential issues to be processed quicker and unclog the international system more. 

Conclusion

Overall the IP Act makes some welcome changes, and at least attempts to internationalize and streamline both patents and designs; something which has been, at least on the patent regime, long needed. Whether the new design infringement provision will cause issues will remain to be seen; however this writer for one believes it will strengthen the registered design scheme and potentially deter cases where infringement would be obvious. The Act will come into force in October, giving relevant parties enough time to prepare for any changes that affect them.

Source: Eversheds

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