The Intellectual Property Act 2014 – designs and patents
The Intellectual Property Act 2014 (“Act”), which came into force recently, introduces a number of reforms in the area of designs and patents, examples of which are listed below.
Designs – new criminal offence
The Act strengthens design rights’ protection by making the intentional copying of a design which has been registered with the UK Patent Office or is a Community Registered Design a criminal offence. From 1 October 2014, an offence will be committed where a person acting in the course of a business “intentionally copies a registered design”, either copying directly or by introducing alterations to the design which are “immaterially” different from the original.
Those deriving an economic benefit from copied designs will also commit an offence when they use, stock, offer, import, export or put the registered design on the market in the course of business.
A defence exists where someone makes use of an unregistered design which is subsequently registered by another party. A right of prior use will apply where a party has been using a “registered design in good faith or made serious and effective preparations to do so.” In this case, continuing to use the design for the same purposes for which it was used prior to the registration will not infringe the registered design but infringement may be held to occur if the scope of use is extended in any way.
Commissioned designs – ownership
The ownership of commissioned designs created after 1 October 2014 is brought into line with current EU law. Where designs are commissioned, the presumption will be that the creator of the design (not the commissioner) will own the rights. It is therefore vital to provide for assignation of the ownership of the design in any contracts for commissioned designs.
Employers need not worry as they will continue to own any designs created by employees, as long as these have been created as a part of their employment.
Patents – infrastructure
The Act provides for a reinforced infrastructure for patents, including:
- The Secretary of State is granted powers to enter into the Unified Patent Court Agreement (“UPCA”) paving the way for the Unitary Patent which will be enforced in all the EU Member States once all Member States have ratified the UPCA
- The Patents Opinion Service (“POS”) of the UK Intellectual Property Office (“IPO”) will be able to revoke a patent where it is considered invalid, subject to the patent-holder’s right to appeal and to get a reviewed opinion
- The IPO may, under certain circumstances, provide information on pending patents to other patent offices
Patents – providing notice of a valid patent
To be granted damages in a case of patent infringement, the patent-holder has to provide notification of an existing patent by incorporating the patent number into the patented product. The Act now provides that it is sufficient for the patent-holder to provide an internet link to the patent notice instead.
MacRoberts advises on all matters associated with intellectual property, designs and patents.