The Intellectual Property Rights Act 2014 received Royal Assent on 14 May 2014 and is due to come into effect in October. The Act will modernise certain aspects of intellectual property (IP) law and assist those seeking to protect and enforce their rights in the UK and beyond.
The bulk of the changes relate to patents and design rights.
Enhanced European Patent System
The Act paves the way for the creation of a pan-European patent right, known as Unitary Patent Protection (UPP), and of a Unified Patent Court (UPC). It is expected that these initiatives will create a uniform system across the EU, making it easier and cheaper for businesses to protect and enforce their patent rights within the EU.
The proposals for the UPP and UPC are set out in the EU’s “UPC Agreement”. In order to take effect, the agreement must be ratified by at least 14 EU member states. It will then come into effect 4 months from that date, which the European Commission expects to happen in early 2015.
The Act does not actually implement any of the aspects of the UPC Agreement but it does give the Secretary of State the power to do so in the future.
To find out more about the plan for the enhanced European patent system, see this guidance note published by the Unified Patent Court preparatory committee.
Virtual Patent Marking
Putting a party on notice of a patent can act as a deterrent to infringement and may also improve the holder’s prospects of successfully claiming damages in the event of an infringement.
The Act introduces virtual patent marking, whereby patent holders can mark their products with a weblink instead of individual patent numbers. The weblink will direct third parties to a page showing the details of the patents and any other related applications.
The link will put people on notice of the patent in the same way as a number, whilst the detailed information on the webpage will create a wider opportunity for the patent owner to claim damages against a party that infringes the patent.
Added benefits include that third parties will have more information about the scope of the patent, helping to avoid potential confusion and disputes; and that the holder will be able to easily alter the contents of the webpage and will not have to alter the markings on the products themselves or their packaging.
Patent Opinion Service
The patent opinion service, which was established in 2005, provides an opinion on patent validity to assist with disputes. The Act will enable the service to also provide opinions on supplementary protection certificates.
Changes to Registered Designs
The Act will enable the UK to join the Hague Agreement on the International Registration of Industrial Designs, meaning it will be one of a range of countries in which you can register your design rights via one central application with one fee, but provides a separate protection in each of your selected countries so a challenge in one does not invalidate all of the others.
This is an improvement on the current situation, whereby a single application can be made for protection throughout the EU but this is vulnerable to central attack, which can result in a loss of protection across the EU.
The Act will create a right for a party to continue its prior use of a design which becomes registered. This will apply where the party acts in good faith and is either continuing its use of a design or has made serious and effective preparations to use the design.
It also introduces a new criminal offence of intentionally copying a registered design, which carries a maximum sentence of 10 years’ imprisonment.
Design Opinions Service
The Act will introduce a design opinions service, similar to that for patents. The intention is that the service will reduce the number of design disputes requiring the courts’ involvement. A holder of a registered design right, or a third party affected by such a right, may request an opinion from the Intellectual Property Office on the validity of the design’s registration and whether it is infringing, or being infringed by, another design.
Scope of Unregistered Designs
The Act will narrow the scope of unregistered design right to reduce the risk of trivial features of designs being protected. Unregistered design right will be available to protect the design of the shape and configuration of an article, as opposed to extending to any aspect of its design.
The test for originality is also clarified. A design may lack originality and therefore not be capable of protection if it is “commonplace in any qualifying country”, which expressly includes any EU member state.
Ownership of Unregistered Designs
Currently, the UK differs from the rest of the EU in that design rights (unlike copyright) belong to the party who commissioned the design rather than the designer. This will be changed, bringing the UK in line with the rules on European community designs.
Once the changes come into effect, commissioners of designs will need a signed agreement saying that the designer assigns their rights. As with copyright, this change will not apply to employees, so the employer will continue to own any design rights created by employees during the course of their work.
Private Use of Unregistered Designs
It will be a defence to infringement for third parties who use designs for private (non-commercial), experimental and/or teaching purposes.
These defences already exist in respect of registered designs. This change also harmonises the UK position with that under EU law.
Many of these changes will be welcomed by businesses as reducing the costs and administrative burden of registering patents and designs, as well as clarifying how those rights are protected and infringed.
Although the Act is expected to come into effect in October 2014, the changes to registration of both patents and designs will take longer. The EU expects the unified patents system to come into effect in early 2015 but it may be delayed until 2016. The design registration changes are also likely to come into force in 2015.
If you have any queries on the registration and protection of intellectual property rights, including patents, designs, copyright and trade marks, please feel free to contact our commercial team.