Changes to UK Intellectual Property Law

As part of the ongoing efforts by the UK government to update British intellectual property law following the extensive Hargreaves’ Review that reported in 2011, many provisions of the UK Intellectual Property Act 2014 came into effect on October 1, 2014. In a separate but related development, The Copyright and Rights in Performances (Personal Copies for Private Use) Regulations 2014 and The Copyright and Rights in Performances (Quotation and Parody) Regulations 2014 came into effect on the same date.

The Intellectual Property Act 2014

The Intellectual Property Act effects significant changes in the law relating to patents and protection of designs.

Provisions Relating to Designs

Criminal Infringement of a Registered Design

Perhaps the most significant change is to make certain copying of or dealing in copies of designs protected by a registered design or a registered community design a criminal offense.

Under the new law,

1. A person commits an offence if—
   • (a) in the course of a business, the person intentionally copies a registered design (which term is defined to include a Registered Community Design) so as to make a product—
     • (i) exactly to that design, or
     • (ii) with features that differ only in immaterial details from that design, and
   • (b) the person does so—
     • (i) knowing, or having reason to believe, that the design is a registered design, and
     • (ii) without the consent of the registered proprietor of the design.

It is also made an offense for a person in the course of a business, to offer, put on the market, import, export or use such a copy or stock it for one or more of those purposes.

Enforcement may be made by local weights and measures authorities, and penalties for committing the offense can include imprisonment for up to ten years, a fine and forfeiture of infringing copies and articles “specifically designed or adapted for making copies of a registered design intentionally.”

Ownership of Design Rights

The law is amended for both registered and unregistered design rights to provide that in the absence of an agreement to the contrary, when a design has been commissioned by another, the designer will be the initial owner of the design, and not the person who commissioned it. This brings UK law into line with the EU Regulation. It also aligns the treatment of UK designs with the way commissioned works are treated under UK copyright law.

Adherence to Hague Design Convention

The Act provides enabling legislation to allow the United Kingdom to accede to the Hague Agreement Concerning the International Registration of Industrial Designs. If this is done, the actual mechanism for implementation of the Hague Agreement will be effected by statutory instrument rather than requiring new legislation to pass through Parliament.

Prior User Rights

UK Patent Law and the Community Design Regulation both have prior user right provisions, but hitherto these have not applied to UK registered designs. This anomaly has now been ended by providing a limited right to continue to use a registered design where a third party acts in good faith in the use of a design that is subsequently registered by another.

Definition of Protectable Unregistered Design

As originally enacted, protection for an unregistered design extended to “design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article.” The law has been amended to delete the words “any aspect” to, to quote the Act’s explanatory notes, “reduce the tendency to overstate the breadth of unregistered design right and the uncertainty this creates, particularly in relation to actions before the courts.”

Exceptions to Infringement of Unregistered Design Rights

Both UK Patent Law and Registered Design Law contain provisions that certain acts do not constitute infringement even though they have not been authorized by the rights holder. Hitherto, there have been no such exceptions for infringement of an unregistered design right. This situation is changed by the new law which provides for exception from infringement for private acts, experiments and teaching (as long as this does not unduly prejudice normal exploitation of the design). The new law also brings the law relating to temporary presence of overseas ships and aircraft in the United Kingdom into alignment with that for registered designs.

Changes in Patent Law

Meeting the Marking Requirement by Posting Information on a Web Page

The United Kingdom has followed the precedent set by the United States in the America Invents Act where marking of a product with a patent number is required in order to secure an award of damages if the patent is infringed, as may be the case where the infringer proves that it was not aware of the patent, such marking requirement may be met by marking the patent product with a free publicly-accessible internet link where the number of the patent associated with the product is set out, known as “virtual patent marking.”

Information-Sharing with Other Patent Offices

The new law provides that where an agreement is in place with a patent office outside the United Kingdom that information supplied to it will be kept confidential until publication of the application, the UK Intellectual Property Office may share information about pending applications before publication takes place.

Preparing for the EU Unified Patent Court

The Act provides enabling legislation to permit the UK government to implement the provisions of the EU’s Agreement on a Unified Patent Court as discussed elsewhere in this Education Center.

Miscellaneous

Opinions Service

The British Patent Office has for a number of years provided an opinions service in which it will opine on validity or infringement of a granted patent. The opinions are made public and the patent owner can request review of certain adverse opinions and if the adverse opinion is maintained, can appeal to the court. The new law has extended this service to registered design rights, although with a different appeal procedure. It also provides for the possibility that the service may be extended to unregistered designs at a later date. The new Act further provides that in cases where an opinion has been reached that a patent is invalid, the Comptroller may revoke the patent after giving the patent owner an opportunity to comment on the opinion and/or amend the patent.

Freedom of Information Research Exemption

The Act provides for certain exemptions from requirements to comply with requests for information under the Freedom of Information Act where the information requested is “obtained in the course of, or derived from, a program of research” and the program is “continuing with a view to publication” and disclosure prior to publication would be likely to prejudice the program or the interests of any individual participating in the program or the holder of the information or the person who intends to publish it.

The Copyright and Rights in Performances Regulations

The two new statutory instruments providing exemptions from copyright infringement for the making of personal copies of copyright works for private use and for quotation and parody provide for very limited, but significant, changes in what constitutes copyright infringement.

In the first of these, relating to private use, it is provided that it is no longer a copyright infringement for the owner of product incorporating a copyright work (other than a computer program) to make a personal copy of that work for example for the purpose of format shifting or back-up. Any personal copies must be destroyed if the individual transfers the work from which they were made to another person, unless the copyright owner authorizes the transfer of the personal copies to that person. Any term of a contract which prevents or restricts the making of a personal copy in accordance with section 28B is unenforceable. However, it is still permissible for copyright owners to incorporate means for limiting copying and a complaints procedure is to be set up for dealing with situations in which such means prevent permissible personal copying under which the Secretary of State may, in the absence of any voluntary measure or agreement by the copyright owner which enables the individual to make personal copies, direct the copyright owner to take steps to ensure that the individual has the means of benefiting from the new regulation.

The second of these statutory instruments, relating to quotation and parody, implements parts of EU Directive 2001/29 on the harmonisation of certain aspects of copyright and related rights. It provides an exception to copyright for the use of a quotation from a work or extracts from recordings of a performance where the use is fair dealing with the work and to the extent that the quotation is no more than is required by the specific purpose for which it is used and the quotation is accompanied by a sufficient acknowledgement. The new Regulation also provides an exception to copyright in respect of fair dealing with a work for the purposes of caricature, parody or pastiche. Any contractual provision seeking to limit these rights is unenforceable.