22/09/2014
On 1st October 2014 several changes to UK design and patent law come into force under the Intellectual Property Act. Presented here is a brief overview of the main changes; more details are available on the UK Government’s website.
Designs
Under the revised law, ownership of a commissioned design will now automatically reside with the designer and not the commissioner, unless a contract states otherwise. This change is specific to commissioned designs created by a self-employed or independent designer; employers will remain entitled to the rights in any design created by an employee in the course of their job and under the terms of their contract of employment. The revised law will apply to designs created on or after 1st October 2014 and applies to both UK registered and unregistered design rights.
The amendment to the UK design law will also introduce a prior use exemption such that any person who is using a design in good faith prior to that design being registered by a third party will be permitted to continue using the design without infringement. The exemption only covers continued use of the design for the same purpose; any amended or new use of the design may constitute infringement of the design registration.
The new law also introduces a criminal offence for the intentional copying of a UK or EU registered design, which brings this aspect of design law into line with current copyright and trademark laws. To constitute a criminal offence, the copying must be intentional, without the consent of the owner of the design right, and whilst knowing or having reason to believe that the design is registered. The offending product must also represent an exact copy of the registered design, possibly with features that “differ only in immaterial details.” The new law applies to intentional copying of a registered design that occurs on or after 1st October 2014.
The changes to the law also affect the scope of unregistered design right, which will become slightly narrower. The present definition of a design encompasses “the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article.” However, the changes to the law will remove the reference to “any aspect” so that, although a whole design and parts of a design will remain protected, a ‘part of a part’ will not. The purpose of this amendment is to prevent claims of alleged copying of small and trivial parts of an existing design.
Amongst other changes to the unregistered design law is a ‘private use’ exemption, which permits use of an unregistered design right without infringement providing it is for one of: a private, non-commercial purpose; experimental purposes; teaching purposes; or using equipment on non-UK registered ships or planes which are temporarily in the UK.
Patents
From 1st October 2014, patent owners will have the option of marking products with a web address as an alternative to marking products with a patent number and country of the patent. Guidance on the requirements for “webmarking” of patented products is available in a dedicated guide provided by the UK IPO.
The UK IPO is also expanding its Patent Opinions Service, which is currently limited to providing opinions regarding novelty and inventive step of a patent and whether or not a patent would be infringed. From the 1st October 2014, the IPO will offer a much wider range of opinions, including whether an invention relates to subject-matter that is excluded from patentability, whether the protection conferred by a patent has been extended by an unallowable amendment, and whether a supplementary protection certificate is valid. Under the new service, the IPO will also have the ability to initiate revocation proceedings in the event that an opinion provided by the IPO finds a patented invention lacking novelty or inventive step. Full details of the expanded opinions service are available here.
Another update to IPO practice will be the expansion of the “worksharing” arrangements that allows the IPO to share details of patent applications with other patent offices to reduce duplication of work. At present only details of published patent applications can be shared under the worksharing scheme; however, from 1st October 2014 the UK IPO will be permitted to share details of unpublished applications with other patent offices within the scheme. The unpublished information that can be shared is limited to information that is likely to lead to a reduction in duplication of work, such as search and examination reports.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.
