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Intellectual Property Act – Top 5 changes to UK design law

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UKSome of the provisions of the Intellectual Property Act come into force today. We’ve already touched on the patents opinions service and web marking of products with patent numbers and today we’ll be taking a quick look at the changes to UK design law. So here’s our top 5 changes to UK design law…..

1) Ownership

From today, the rules on ownership are changing slightly so that the designer (or the designer’s employer) will, in the absence of a contract that says otherwise, own a design rather than the commissioner of the design. This change “applies to all designs created on or after 1 October 2014, unless the design is created under a contract which existed prior to that date and which also specifies who owns the design. In that case, the contract (and its ownership provisions) will still apply”.

As with the creation of any Intellectual Property Rights if there are two or more businesses or people involved it is important to get ownership issues sorted out in a contract before the work begins. It is far easier to agree who owns what at an early stage!

2) Criminal offence of copying

The IP Act introduces a criminal offence for the intentional copying of a UK or EU registered design. The IPO notes that this gives registered designs the same level of protection as copyright and trade marks. However, it was this part of the IP Act (as Clause 13 of the Intellectual Property Bill) that attracted a huge amount of comment on both sides as the IP Bill moved between the two Houses.

The offence applies to any intentional copying of a Registered Design that takes place on or after 1 October 2014 and does not apply to acts which were carried out in the past. It doesn’t matter when the design was registered so the provision will apply to designs registered before today.

3) Prior User Rights for Designs

Similar to the prior user provisions in the Patents Act there are now provisions that will offer some limited protection to those who, in good faith, start to use a design, but who subsequently find someone else has registered that same design before they have done so. If such a situation arises it will be possible to continue to use the design, but only in the same way that it was already being used – or where “serious and effective” preparations to use it had been made – at the time the other design was registered.

4) Definition of Unregistered Design Right 

The definition of unregistered design right has been narrowed slightly to remove reference to “any aspect” from the unregistered design definition. Whole designs and parts of designs will still be protected under the new definition but small and trivial parts of designs (a “part of a part”) will no longer be protected. This change is likely to impact upon cases such as Sealed Air Ltd v Sharp Interpack Limited where the defendants were found to infringe Sealed Air’s unregistered design rights in a small part of their fruit punnet designs.

5) Future Changes 

And in a shameless effort to lump a number of changes together in order to make a “Top 5” list, here are some things that are still in the pipeline for UK designs:

i) the UK is to join the Hague international designs registration system in its own right. Currently applicants wanting to use the Hague system and wanting to cover the UK need to go for EU-wide cover. The UK will not join the Hague system before late 2015 however.

ii) The IPO is planning to allow electronic inspection of  certain design documents. Again this is not likely to happen before the end of 2015

iii) the appeal system for designs is to be changed along similar lines to the trade mark system with a choice between the courts and and a more informal process, to an ‘Appointed Person’, an expert in intellectual property law appointed by the Lord Chancellor. This may come in Spring 2015 but we should expect a consultation first.

iv) The Design Opinions Service, which should be introduced next year, will issue non-binding opinions from the IPO on matters relating to designs.

More reading – the UKIPO has produced a handy guide on the above issues which can be found here – Business Guidance of changes to the law on designs

Mark Richardson 1 October 2014

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