The Intellectual Property Bill considered by Parliament between May 2013 and April 2014 has received Royal Assent on 14 May 2014 and became the Intellectual Property Act 2014. Provisions of the Act were inspired by Professor Hagreaves’ report to the UK Government on Intellectual Property published in 2011. The Act aims to simplify intellectual property law and to improve enforcement of IP rights and the process of obtaining IP protection. Provisions introduced mainly concern design rights and patents.
What are the main changes?
- New criminal offence: a person intentionally copying a registered design (both UK and community designs) or offering, putting on the market, importing, exporting or stocking such a product knowing or having reason to believe that the design has been intentionally copied will now commit an offence. The maximum penalty is imprisonment up to 10 years or a fine. The person charged with the offence can show that they reasonably believed that the registration of the design was invalid as a defence. This provision brings design law into line with trade mark and copyright where such offences already existed.
- Ownership: the first owner of a design will be the designer, or if employed, his/her employer. It is no longer the individual or company who commissioned the design. This thus brings design law in line with the EU provisions and copyright law.
- Design Opinions Service: the Intellectual Property Office may now provide a non-binding opinion service for UK registered designs on matters such as ownership, validity or infringement of a design. It is possible that this system will be extended to UK unregistered designs and community designs. These opinions are intended to assist parties in order to avoid potential litigation and expensive and time consuming procedures. A similar service already exists for patents.
- The Hague agreement: the UK is joining this agreement which is an international design registration system. It was already part of it as an EU member but its separate ratification will now allow people registering designs outside the EU to choose to protect their designs in different countries individually. This will significantly reduce the fees incurred.
- Unified Patent Court: the Act provides a power to implement such a court by making amendments to the UK Patents Act which will help introducing a single patent system in almost all EU countries. This will enable British businesses to protect their inventions across countries in a single patent.
- Changes to the Patents Opinions Service: the Intellectual Property Office can now give opinions on questions of validity of a patent which are no longer limited to novelty and/or inventive step. It can also deal with infringement and validity of Supplementary Protection Certificates.
- Marking product: to provide necessary public notification of patent protection, it is now possible to mark the patented products with either the patent numbers or a website address. This will thus reduce the number of cases in which the recovery of damages or profits is limited under the Patents Act because the infringer of a patent has proved that he was not aware and had no reasonable grounds for supposing that the patent existed.
- Sharing information with overseas Patent Offices: the Intellectual Property Office is now able to share information on unpublished patent applications with other national and regional patent offices. This will reduce duplication between national offices and facilitate the patent grant process. This will particularly be useful when an application in another office is claiming priority from a UK application.
The Act thus clarifies intellectual property law and makes it more accessible for businesses. Its provisions are now in accordance with the EU system. Moreover, the Act will lower costs for UK businesses when applying for Europe-wide patent. These new rules will start to come into force from 1 October 2014, but details of their implementation will be set up by Statutory Instruments later on. Some Regulations on copyrights will also come into force in June 2014.