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Clause 13 of the Intellectual Property Bill is attracting a fair amount of discussion on both sides of the argument. I thought I’d take a closer look at some of the issues around the clause and what happened before its appearance in the Bill. I must have been in a funny mood when I wrote the post below as its in the style of a totally fictional conversation between a client and his patent attorney. See if you can guess which side of the argument I come down on……

Designer: So I was reading something about the “IP Bill” in the paper the other day. What’s that?

Patent Attorney: Well the IP Bill is designed to help modernize certain aspects of IP law and it’s also the first stage in getting the UK to ratify the unified patent court agreement which will be necessary for the unitary patent system to come into effect.

D: Sounds fairly major. Does it affect me?

PA: Oh yes, it’s primary IP legislation. That doesn’t come along that often. And it is relevant to you, there are quite a few design issues that are covered in the Bill. It’s meant to simplify and strengthen design protection for the UK’s hugely important design sector.

D: You sound like you’re quoting something there?

PA: Yes, It’s from the UK IPO’s page on the IP Bill. There’s a handy PDF guide there as well that covers some of the design issues: joining the Hague agreement to give more flexibility to the designer internationally; introducing a new Designs Opinion Service; introducing a criminal offence for copying of registered designs; changing design ownership rules and introducing a private use exemption for unregistered designs.

D: Sounds like quite a lot then. What was that about criminal provisions? That sounds quite serious.

PA: Well the government wants to strengthen design enforcement by introducing criminal penalties. There are similar provisions for copyright and trade marks.

D: You mean we’re obligated under TRIPS to provide criminal protection for designs?

PA: Er, no. This change seems to result from lobbying from design groups such as ACID and from the UP IPO’s own research.

D: Oh right, so what did the UK IPO find?

PA: Well a survey by the IPO found nearly 59% of respondents had experienced their designs being copied.

D: Wow, 59% , that’s quite a high percentage really. How many respondents were there to the survey?

PA: Um, it looks like 139* 

D: 139,000. That’s a pretty impressive number!

PA: Er, no, sorry, 139. – 1.3. 9.

D: What, one hundred and thirty nine?

PA: Yup.

D: That a pretty small sample size to base such a law change on. So what issues were raised?

PA: Complexity of the law, the cost of taking action and stuff like that. There were some suggestions made as well like the introduction of a designs opinion service, standardizing design representations, a lower cost process, novelty searches etc. The idea of using the small claims track of the Patents County Court to hear registered design cases was also suggested and even though concerns were raised about the PCC’s caseload that idea was well received in principle.

D: so where does the idea of criminal provisions come from?

PA: Not sure.

D: What about ACID’s own research then? Aren’t they an organization that helps its members protect and exploit their IP?

PA: Yup. Well this article  suggests ACID did their own survey as well.

D: Excellent. I guess they have loads of responses.

PA: 99 companies were surveyed.

D: Oh, come on! Ninety-nine!……..Alright, go on then, tell me what were they asked?

PA: Well 85 out of 99 surveyed believed that infringement of unregistered designs was blatant rather than inadvertent. 3 thought it was blatant and inadvertent and 1 didn’t comment.

D: “Blatantly inadvertent”? Seriously? Three companies said that their designs had been blatantly infringed but it was inadvertent? How does that work? OK. Forget that. What options did the IPO consider to tackle registered design infringement?

PA: This impact assessment is what you need. Option 1 was “Do nothing” and maintain the status quo, Option 2 was to introduce criminal sanctions for registered design infringement.

D: And Option 3?

PA: Er, there was no Option 3.

D: So, despite the IPO’s survey flagging up use of the small claims track at the PCC as a solution to the cost issue that’s not in the IP Bill at all and we’ve instead got a thermonuclear option of calling in the IP Unit?

PA: Yes well. It does seem odd now you mention it that the PCC didn’t get an option. Still clause 13 is there to protect you.

D: How’s that then?

PA: Well, as noted by Sebastian Conran in a recent discussion on the subject of Clause 13, designs that are inspired by other designs or which reference them won’t be caught by this clause, only slavish copying or direct copying will be caught so it’s more about someone selling knockoffs rather than anything else..So you’ll still be able to draw your inspiration from a range of sources.

D: Really. Does the clause say that it only applies to slavish or direct copying?

PA: Er no. It just mentions “A person commits an offence if, in the course of business, the person copies a registered design so as to make a product exactly or substantially to that design, and……”

D: So it doesn’t do exactly what Sebastian Conran said? Well, I suppose the legislation probably says that the copy should be an infringement and registered designs must be examined?

PA: Er no…again. It doesn’t say that and registered designs are of course unexamined so it might be the case that a design that’s made the subject of criminal sanctions might not even be valid. The sanctions provide for up to 10 years in prison as well.

D: Oh, dear. I’m not sure I like the prospect of being on the receiving end of something like that. I guess that the trade mark and/or copyright criminal provisions have never gone wrong have they?

PA: Er.

D: Aaarrgggh.

PA: well there was this horror story that was relayed on IPKat [ipcopy: see first comment under IPKat post] about someone that got accidentally caught up in a criminal trade mark infringement case and eventually was fined £250,000.

D: Oh by Dyson’s Cyclone!…. What can I do about it?

PA: Well the Bill is still passing through the Commons. I guess you could try and lobby against it but I wouldn’t hold out too much hope as even a letter from James Dyson in the Lords debate didn’t knock out this clause.

D: I want to go home.

PA: Yes, in a minute but first there are some officers here who want to talk to you about that office chair order you fulfilled the other week….

* Summary of responses in Annex A of this Hargreaves Design Assessment document which notes 22 responses to Call for Evidence and 117 substantive replies from an online survey

Mark Richardson 14 November 2013