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As ipcopymark has already reported, this week David Willetts has proposed amendments to Clause 13 of the Intellectual Property Bill that are, in IPcopy’s view, a step in the right direction. Hot on the heels of David Willetts’ amendments, Iain Wright has now put forward further amendments. A tracked copy of the proposed changes to Clause 13 is below, with Willetts’ proposals in red, and Wright’s proposals in blue.

Wright’s proposals are an interesting bunch. They expand on the notion that the copying must be deliberate, and bring in a criteria a person commits an offence if he knows that the acts committed would infringe the registered design, or is reckless as to whether they infringe the registered design. However, the proposed amendment to subsection 5 removes the defence that the design right was not infringed, replacing it with the criteria that the defendant reasonably believed that the registered design was not infringed. IPcopy’s view is that it would far preferable to keep both of these defences. There is also a puzzling addition of a new subsection 7A which defines the term ‘design right’ as including an unregistered Community design. Since the term ‘design right’ does not actually appear in this section it is unclear to IPcopy what this new subsection would add. If you have any thoughts, please let us know!

Also worth noting are Wright’s proposed additions to Clause 1 (that within 12 months the Secretary of State will undertake a review as to how these provisions have advanced the design industry in the UK), and Clause 8 (that within 6 months the Secretary of State will report on plans to publicise the law changes with the objective of educating holders of design rights), and a proposed new Section of the Patents Act that would introduce a “Director General of Intellectual Property Rights” with responsibility for, amongst other things, promoting the creation of new IP and educating consumers as to the importance and nature of IP rights.

35ZA Offence of unauthorised copying etc. of design in course of business

(1)A person commits an offence if—

(a)in the course of a business, the person intentionally copies a registered design

(i) exactly to that design, or

(ii) with features that differ only in immaterial details from that design so as to make a product exactly or substantially to that design,
and

(b) the person does so—

(i)knowing, or having reason to believe, that the design is a registered design, and

(ia) knowing that, or being reckless as to whether, making the product is an infringement of the registered design, and

(ii)without the consent of the registered proprietor of the design.

(2) Subsection (3) applies in relation to a product where a registered design has been intentionally copied so as to make the product exactly or substantially to the design

(a) exactly to the design, or

(b) with features that differ only in immaterial details from the design.

(3)A person commits an offence if—

(a)in the course of a business, the person offers, puts on the market, imports, exports or usessells the product, or stocks it for one or more of those purposes,

(b)the person does so without the consent of the registered proprietor of the design, and

(c)the person does so deliberately knowing, or having reason to believe, that—

(i) a design has been intentionally copied without the consent of the registered proprietor so as to make the product exactly or substantially to the design to the design or with features that differ only in immaterial details from the design, and

(ia) the person does so knowing that, or being reckless as to whether offering putting on the market, importing, exporting or selling of the product is an infringement of the registered design, and

(ii)the design is a registered design.

(4)It is a defence for a person charged with an offence under this section to show that the person reasonably believed that the registration of the design was invalid.

(5)It is also a defence for a person charged with an offence under this  section to show that the person—

(a) reasonably believed that the registered design was not infringed.(a)did not infringe the right in the design, or

(b)reasonably believed that the person did not do so.

(6)The reference in subsection (3) to using a product in the course of a business does not include a reference to using it for a purpose which is  merely incidental to the carrying on of the business.

(7)In this section “registered design” includes a registered Community design; and a reference to the registered proprietor is, in the case of a  registered Community design, to be read as a reference to the holder.

(7A) In this section “design right” includes an unregistered community design and a reference to the owner of the design right is also to be read as a reference to the owner of a community design right in a design.

(8)A person guilty of an offence under this section is liable—

(a) on conviction on indictment, to imprisonment for a term not  exceeding ten years or to a fine or to both;

(b)on summary conviction in England and Wales or Northern  Ireland, to imprisonment for a term not exceeding six months or  to a fine not exceeding the statutory maximum or to both;

(c) on summary conviction in Scotland, to imprisonment for a term not exceeding 12 months or to a fine not exceeding the statutory maximum or to both.

The definitions of Relevant article and Relevant product have also been amended to read:

(2)“Relevant product” means a product which is made exactly or substantially to a registered design to a registered design, or with features that differ only in immaterial details from a registered design by copying that design intentionally.

(3)“Relevant article” means an article which is specifically designed or adapted for making copies of a registered design intentionally.

Ian wright’s proposed additions to Clause 1:

(5) The Secretary of State will, within a period of 12 months of the Act coming into force, undertake a review as to how the provisions within this section have—

(a) contributed to the advancement of the design industry in the United Kingdom; and

(b) helped to harmonise unregistered design rights between the UK and unregistered Community design right.

(6) The Secretary of State will report the findings of his review to both Houses of Parliament.

And Clause 8:

(3) The Secretary of State will, within six months of the Act coming into force, report to both Houses of Parliament on plans to publicise changes to the law introduced under this provision with the objective to educate holders of design rights.

And a proposed new Section:

295A Director General of Intellectual Property Rights

(1) The Secretary of State shall appoint an officer to be known as the Director General of Intellectual Property Rights (“the Director General”).

(2) The Director General has a duty to—

(a) promote the creation of new intellectual property,

(b) protect and promote the interests of UK intellectual property rights holders,

(c) co-ordinate effective enforcement of UK intellectual property rights, and

(d) educate consumers on the nature and value of intellectual property.

(3) In performing those duties, the Director General must also have regard to the desirability of—

(a) promoting the importance of intellectual property in the UK,

(b) encouraging investment and innovation in new UK intellectual property, and

(c) protecting intellectual property against infringement of rights.

Emily Weal 24 January 2014