A collection of adjustments to the existing rules on UK design rights and patents were introduced today, as the Intellectual Property Act 2014 finally came into force. Spearing Waite’s IP specialist John Buckby highlights the key changes.
The Intellectual Property Act – it’s quite a grand title isn’t it? Sounds like it’s going to revolutionise all of IP law. But it doesn’t. If you take a look under the bonnet of the new Act, which came into force today, it makes a number of tweaks and adjustments to certain areas of design and patent law, but doesn’t affect other IP such as copyright or trade marks.
Still – the changes may be relevant to you, and we highlight some of the most important introductions in the new Act below.
i) Ownership of commissioned designs
UK design rights protect the shape and configuration of articles. These rights are most relevant to those who create products with an original shape which departs from the norm, such as household and industrial products, cars, or furniture.
The Act has made a subtle change to the rules about who owns the rights in a commissioned UK design. Until now, the default position was that a design commissioned by a third party would automatically be owned by the person commissioning (and usually paying for) the design.
Now, the default position will be that the designer will own the rights in a commissioned design – even if they’ve been paid to create it – unless there’s a written agreement stating otherwise.
This brings UK design law into line with copyright and EU designs, which state that a non-employed designer or creator owns the rights, unless there’s a written assignment to transfer the rights.
So, if you want to own the rights in commissioned designs or copyright works, you need to ensure a written agreement is in place. It’s not enough just to pay for the creation of the design. That may give you certain rights to use the design, but it does not make you the actual owner of the design rights.
Having said that, you won’t need a written agreement for employees. If designs or copyright works are created in the course of employment, the employer is the default owner and no further paperwork is required.
ii) Criminal sanctions for design copying
The Act has introduced a new criminal offence for intentionally copying registered designs.
The offence applies where a person intentionally copies a design, knowing or having reason to believe that it is registered, and creates a product which is identical to the registered design or only differs in immaterial details. The punishment is a fine, or a maximum sentence of up to 10 years in prison.
The introduction of the offence gives designers another reason to register their designs (the offence doesn’t apply to unregistered designs) – and also to ensure that they use the proper notices to alert the public to the registered status.
The new offence will provide a tough deterrent to those planning to make cheaper imitations of well-known designs. Rights owners will be able to use the new offence to work more closely with Trading Standards to enforce their rights against infringers.
Company directors responsible for the company’s offences may also be held personally criminally liable, and might not be able to hide behind the ‘corporate veil’.
iii) New defences – and a gap in protection as a result of 3D printing?
New exceptions have been introduced allowing for private, non-commercial and experimental use of designs. That sounds reasonable – why should individuals who makes single copies for their own private use be sued, especially where the damage to the creator is negligible?
That’s one side of the argument. But if you consider what happened to music sales as a result of ‘downloads for private use’ – and take into account the rise of 3D printing – it starts to look like a dangerous potential gap in protection for designers.
The exception might permit private individuals to create copies of designs for their own personal use, with a home 3D printer. It will be interesting to see how this defence is applied – it clearly has the potential to become a damaging loophole for designers if 3D printers become commonplace fixtures in homes, and there is no need to buy designs from a shop or other commercial ‘middleman’.
Patents – changes introduced by the Act
The Act has also made a couple of changes in relation to patent procedures and rules. One of these changes is that the Intellectual Property Office’s powers to issue opinions and guidance on the validity of patents have been widened. That may be useful to businesses wishing to obtain quick, cheap guidance as to whether a patent is a threat to their activities.
The Act has modernised the rules about how patented products are marked. Patent owners will no longer be obliged to include the patent number on the product, to indicate that it is protected. They can also publish a link to a webpage where further, more detailed information can be found. This will help patent owners to direct potential users to their contact details, and perhaps to communicate a willingness to enter into licences with interested third parties.
The Act paves the way for the introduction of a Unified Patent Court, by giving the Secretary of State powers to make orders to effect the necessary changes.
The Unitary Patent will be a single patent valid throughout Europe, which can be enforced across the whole of Europe with a single judgment in a designated court – as opposed to having to sue for infringement separately in each EU member state.
Sounds good, but it’s a double edged sword – the patents are equally vulnerable to being revoked for the whole of the EU in one go. The initial signs are that patent owners are still rather cagey about this prospect, and they may continue to take a piecemeal approach to enforcement rather than risking all their EU rights by wrapping them up in a single patent.
What does the Intellectual Property Act do for you?
The Intellectual Property Act has a big name, but a narrow scope. It is only likely to be of immediate relevance to businesses in which UK design rights are important.
The new criminal offence will give design businesses extra teeth to work with Trading Standards to enforce their rights, and may reduce infringement (especially if there are a few high-profile example cases). On the other hand, the defence for private copying could become a serious gap in protection as 3D printing progresses inevitably towards ubiquity.
The changes to patent law pave the way to important reforms in future in terms of the unitary patent effective throughout the EU. Whether the vulnerable nature of such a patent will gain traction amongst patentees remains to be seen.
For those of you without an interest in design rights or patents, the Intellectual Property Act doesn’t really affect you – and you can get back to what you were doing!