Intellectual Property Bill - What Does It Mean For Me?

Posted by Sarah Whittle on
The Intellectual Property Bill 2013/2014 is currently progressing through the House of Commons. The Bill has already been through all of the stages needed to pass through the House of Lords and was presented to the House of Commons on 29 August. 

The aim of the Bill is to modernise certain aspects of Intellectual Property law with a view to simplifying and improving certain aspects of design right and patent protection.

Design Rights – What’s New?

The IP Bill aims to simplify the complex area of design rights and ensure that holders of design rights benefit from a more robust system to protect their rights.

One major change brought in by the Bill is a change in the default ownership of a design.  Currently, if you commission a third party to produce a design for you, it is you, as the commissioner of the design, that would own the design rights.  The IP Bill proposes a change in this respect to provide that it is the designer, not the commissioner, who is the default owner of the design.  As a result, it is the designer that will own the design rights in a design, even if they have been paid for another third party to produce that design, unless there is a contract in place that states otherwise.  This does not apply to designs produced by an employee as part of their employment; the position remains that an employer continues to own the rights to any design produced by an employee as part of their paid role. 

A further change brought in by the Bill is that it introduced a "Design Opinions Service".  This service will provide an option to refer potential disputes concerning design rights for a low cost and impartial view.  Whilst the view is non-binding on the parties, it is expected that use of this service will assist parties in settling disputes without having to resort to expensive litigation, an expectation that is supported by results achieved through a similar system already in operation for patents.  The impartial opinions offered will also assist parties in deciding whether to take action against another. 

In respect of registered designs, the Government is strengthening the enforceability of these rights by the introduction of criminal penalties for the deliberate copying of a registered design.  This ensures that registered designs are on a par with copyright and trademarks, which already attract criminal penalties for infringement.  The aim is that the strengthening of registered design rights will allow owners of these rights to protect them more efficiently.

The scope of protection for unregistered design rights has also been clarified by the changes proposed by the Bill.  Under current legislation, an unregistered design right can be claimed in "any aspect of the shape or configuration… of the whole or part of an article".  The IP Bill proposes to remove the words "any aspect" to clarify the scope of an unregistered design right and ensure that rights are not being claimed in a very small part of a design. 

Finally, the Bill seeks to improve access to the international design registration system, meaning that those seeking to protect their designs through the international system will be able to register their designs in the UK and abroad with a single application across as many or as few including the individual member nations of the European Union, with one application and one fee. 

Patents – What’s New?

Again, the changes to the patent system are designed to make it cheaper and easier for holders of patents to use and enforce their rights. 

To try and help speed up the patent granting process around the World, a process that can take years, the Intellectual Property Office in the UK will now be allowed to send more UK patent information to other patent offices around the Globe on a confidential basis. 

The proposed changes now also mean that instead of having to provide lists of relevant patent numbers on patented products, businesses will now be allowed to demonstrate that something is patented by simply providing a web address on your patented products to tell others about the patents.  For products that involve a number of patented processes, this will make it cheaper and easier to provide the latest patent details to third parties. 

The Bill also provides that the UK will take part in the European Unitary Patent and Unified Patent Court.  The Unitary Patent will cover 25 EU member states, offering businesses a saving in translation costs alone of approximately £20,000 per patent for protection within Europe.  The Unitary Patent Court, which will be partly hosted in London, will handle disputes concerning Unitary Patents.  This means that a dispute can be decided in London, as opposed to having to fight the patent disputes in each of the countries in which you conduct business.

Finally, the Patents Opinion Service offered by the Intellectual Property Office is being given wider powers.  Currently, if a dispute is referred to the service and they are of the view that the patent concerned is invalid, it is the responsibility of the third party concerned to seek revocation of the patent, a costly and drawn out process.  The Bill proposes that, in clear cut cases, the Intellectual Property Office can initiate revocation themselves.  This should result in more invalid patents being revoked, rather than existing purely because no further party has the funds or inclination to apply to revoke it.

There are further changes brought about by the Bill and the final form of the Bill remains to be seen once it has progressed through the House of Commons.  However, the changes outlined above have been broadly positively received and, once implemented, should provide substantial benefits within the UK seeking to protect their Intellectual Property rights.

About the Author

Sarah is a Senior Associate in the Cardiff Litigation and Dispute Resolution Team who advises both private and public sector clients on a wide range of commercial and public law disputes.

Sarah Whittle
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029 2068 6135

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