New Act to modernise Intellectual Property Law

“More efficient”. “Clearer”. “More accessible”. These are the aims of the new Intellectual Property Act 2014 (the “Act”), due to come into force in October 2014. Having received royal assent on 14 May 2014, the Act comes as the response to the Hargreaves Review of IP and Growth in 2011, which set out recommendations for the modernisation of the Intellectual Property (“IP”) system in the UK. 

Many of the provisions, which focus predominantly on patents and designs, will align IP law in England and Wales with European (“EU”) law and provide for ever increasing harmonisation in the future. 

Some of the key provisions of the Act are set out below.

Patents:

• The introduction of a single ‘unified’ patent to be obtained across the 25 participating EU states through one application process. 
• More efficient communication between the UK Intellectual Property Office (“IPO”) and its counterparts overseas, to enable offices to share unpublished patent information. 
• The ability to mark a product with a website link which specifies its patent number, reducing the likelihood of successful defences of ‘innocent’ infringement. 
• Expansion of the remit of the IPO’s Opinions service to provide impartial assistance in relation to a greater range of issues.

Unregistered design rights:

• A designer is to be the owner of unregistered design rights rather than the commissioner (excluding employer) of the design. 
• Greater clarity in respect of the qualifying countries in which the ‘commonplace’ aspect of designs is to be assessed. 
• Limitation of the definition of unregistered design to prevent protection of ‘trivial’ features of a design.
• Extension of the concept of ‘qualification’ of creators of unregistered designs to cover all those who are economically active in the EU.

Registered designs:

• Deliberate copying of a UK or EU registered design, in certain circumstances, will now be a criminal offence. 
• New limited defence of ‘prior use’ to allow good faith third parties to continue using their designs, notwithstanding any subsequent registration by a third party.
• Exemption from copyright infringement for legitimate use of registered designs.
• New IPO Opinions service, similar to the non-binding service available for patents, to cover registered designs, with the possibility for this to also be extended to unregistered design rights. 
• Limitation of the defence of ‘innocent infringement’, to allow registered design owners to make a claim for some or all of the profits gained by the infringing party.
• New enforcement powers for Trading Standards in relation to design offences, to tally with the powers already in place for copyright and trade marks. 

The Department for Business, Innovation and Skills anticipates that the Act will “help businesses to better understand what is protected under the law, reduce the need for costly litigation and provide greater certainty for investors in designs and technologies”. Certainly the removal of unnecessary ‘red tape’ and the introduction of more efficient online services will be welcomed by businesses across the UK, who invest heavily in IP protection and lament the uncertainties fostered by the current system. 

Given the extensive changes to come into force from October 2014, it is important that businesses fully acquaint themselves with the provisions of the Act and understand how these will affect them. Whilst the Act introduces several new protections, it also establishes numerous restrictions (including criminal sanctions) which businesses must consider in order to avoiding falling foul of the changing legal landscape. 

Now is an ideal time for businesses to undergo an IP ‘health check’, prior to the scheduled October changes. This will help to ensure that their intellectual property portfolio is best protected and their key personnel are up to date with the new legislation. By being fully informed, businesses can then make the most appropriate choices about how to deal with their IP rights and respond proactively in the event their own rights are infringed or they are accused of infringement themselves. Although the IP system can be complex, with the right advice, businesses can simply and effectively use the legislative framework to their legal and commercial advantage. 

For further information on the issues raised in this article, please contact Tim Richards, (Partner) at tim.richards@michelmores.com or David Thompson (Associate) at david.thompson@michelmores.com