By Julie Nixon
On October 1st this year the Intellectual Property Act 2014 came into force, along with exceptions to copyright that allow limited use of copyright works without the permission of the copyright owner (which I have blogged about previously). Here I will touch upon changes introduced with the new Act, mainly aimed at patent and design law.
Changes to Patent Laws
The new Act brings the creation of the EU unitary patent a step closer by providing the initial framework for the implementation of the Unified Patent Court (UPC) in the United Kingdom. A new section has been introduced into the Patents Act, which permits the UPC Agreement to be brought into effect by order of the Secretary of State. London is to be one of the three main centres of the new Pan-EU Court.
Other changes include; an update of the patent marking provisions so patent owners will now have the ability to mark their products with either the specific patent number(s) or a web link which details the specific patent number associated with the patented product; the grounds on which the UKIPO can provide an invalidity opinion on a patent have been extended; the UKIPO will also be able to issue opinions on the infringement and validity of Supplementary Protection Certificates; the Comptroller-General will be able to revoke a patent on his own initiative if, in his opinion, a patent is invalid because the invention covered by the patent was either known or was obvious; and the UKIPO will be able to share information on unpublished patent applications with other national patent offices to help clear backlogs internationally.
Changes to Design Laws
Design rights protect original 3D designs, which are not covered by copyright, trademarks or patents. The recent Trunki case (mentioned by Andy) is a good example of how useful design rights can be to a business; if Trunki had not protected the design of its children’s suitcase with a design right it would have struggled to enforce its intellectual property rights.
The Act introduces criminal penalties and liability for infringement of registered designs, bringing design rights into equal status with copyright and trade marks in this respect. It is now an offence to intentionally copy a registered design in the course of business, but the offending copier must know or have reason to believe that the design is a registered design. A business with registered design rights will be able to report those selling “knock-offs” of its designs.
With respect to ownership of an unregistered design, the Act changes the rule that the commissioner of an unregistered design is the owner of the design rights, so instead the owner will be the designer. The same rule will apply to registered designs. Businesses should we aware of this change, where they have commissioned a design and intend to own it, an assignation may be required from the designer unless there has been a specific agreement between the parties.
The Act will also introduce a new design opinions service which should help resolve disputes over registered designs without the need to involve court proceedings. The service will be modelled on the patent opinions service, is intended to be low cost and non-binding, and encourage those holding registered designs to enforce their rights.
Freedom of Information Exemption for Research
The Act has created an exemption from the Freedom of Information Act 2000 for pre-publication research. The exemption came about as a result of lobbying from universities because of fears that researchers could use the FOI Act to “scoop” raw experimental data from rival scientists and beat them to publication. It was also feared that businesses might use the FOI Act to access valuable research being conducted by commercial competitors collaborating with universities before patents had been taken out. Researchers can now validate their work before putting it into the public domain and so avoid any public scare mongering. The change will bring the law in England and Wales in line with Scotland, which already has an exemption.
The Way Forward
These reforms are part of the government’s initiative to modernize the UK intellectual property framework to best support innovation and allow businesses to easier protect their intellectual property rights. The Act’s aim is to ensure the granting, enforcement or challenging of patents or designs is simpler, faster and more cost effective. We will just have to wait and see what impact the new provisions have for businesses; in particular SMEs for whom expensive intellectual property related costs are an issue.