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The Intellectual Property Bill – Unregistered Designs

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Parliamentary copyright images are reproduced with the permission of Parliament

Parliamentary copyright images are reproduced with the permission of Parliament

The majority of the Intellectual Property Bill relates to changes to the protection of designs. Following the Hargreaves Review of Intellectual Property and Growth, the UK Intellectual Property Office carried out a work programme to determine potential improvements to the current design framework. This led to a consultation in July 2012 with proposals to amend the current system for both unregistered design rights and registered community designs. In turn, the proposals in the Bill have basis in the work carried out by the IPO following the Hargreaves Review.

In the third part of a series on the Intellectual Property Bill, IPCopy summarises the proposals affecting unregistered design rights. [This post looks at the IP Bill as originally published. We will revisit the IP Bill at a later date to look at amendments introduced in its passage through Parliament.]

The amendments detailed below will only apply to designs created after the Bill is passed and will not be applied retrospectively.

Meaning of “Design” and “Original”

The definition of what constitutes a design is amended in the proposals to the Bill. Specifically, the protection for trivial features of designs will be limited by removing the wording of “any aspect of” the shape or configuration of an article. The intention of this amendment is to reduce the tendency to overstate the breadth of unregistered design right and the uncertainty this creates, particularly in relation to actions before the courts.

Further, the proposed definition of original is that is it is not just commonplace but “commonplace in a qualifying country”. These countries are defined in section 217(3) of the Copyright, Designs and Patents Act 1988. The current wording has been a cause of confusion as to the geographical coverage over which that meaning applies, although there is case law that has helped to define it.

Ownership of Design

To bring the UK law into line with EU regulations, the ownership of unregistered designs which have been created under commission is proposed to automatically initially be assigned to the designer and not to whoever commissioned the design.

Further amendments are made throughout the Copyright, Designs and Patents Act to ensure consistent treatment of commissioned designs.

Qualification Criteria

The Bill proposes to simplify whether a design qualifies for protection when first being put on sale (or marketing). Currently, depending on the nationality or place of residence of the person who did the marketing, a design may qualify for an unregistered design right. The amended provisions mean that this will instead depend on the country in which those sales took place.

Other changes to qualification criteria throughout the Copyright, Designs and Patents Act remove references to a “qualifying individual” and amends definitions for a “qualifying person”. The amended definition covers individuals who normally lives or have a place of business in a qualifying country and would therefore no longer require companies to be formed in the UK or another qualifying country to benefit from unregistered design rights.

Infringement: Exceptions

New insertions into the Exceptions to Rights of Design Right Owners chapter of the Copyright, Designs and Patents Act mean that acts done  for teaching purposes or privately and for no commercial purpose, will not infringe a design right. Similarly, there are the exceptions for experimental purposes to allow inspiration from existing designs with the intention of encouraging innovation.

In line with EU regulations, exceptions are also made for ships and aircrafts which are registered in another country but which are temporarily in the UK.

Laurence Lai 21 June 2013

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