Intellectual Property Bill update

It's one of those pieces of statute that feels as though it has been coming through the legislative pipeline for ever and a day by now, but the Intellectual Property Bill, introduced in the House of Lords to implement the recommendations of the Hargreaves Report of 2011, will shortly receive its third reading in the House of Commons, and may then finally be close to receiving Royal Assent later this year.

It therefore seems like a good opportunity to consider some of the main features of the proposed new law which relate predominantly to the areas of Design Rights and Patents.

Design Rights

The Bill places a good deal of emphasis on strengthening and clarifying the law around Design Rights, including making the infringement of a Registered Design Right a criminal offence in some circumstances. 

This and other changes around Design Rights are said to be policy decisions derived from Hargreaves to give equal recognition at law to Design Rights (which generally tend to arise from the industrial and manufacturing sectors) on a par with the sanctions that already exist for the protection of copyright works and brands / trade marks.

There will be a new, non-binding, voluntary Designs Opinion Service available from the Intellectual Property Office enabling would-be parties to litigation to get an early, impartial view on the strength of their respective cases. It is hoped that this will reduce the costs burden on SMEs of enforcing Design Rights, and some of the vagaries of litigating them. 

The Bill makes certain acts exempt from being an infringement of an Unregistered Design. These include acts done privately, for experiments or for teaching.

Patents

The IP Bill introduces a new mechanism for the owners of Patents to put the public at large on notice of the existence of their rights. If the Bill becomes law, it will provide that they will be able to mark a patented product with an internet address where details of the relevant Patent number(s) can be found.

Currently patent owners have to mark each of their products with the specific patent number(s) in question if they wish to benefit from the fullest protection of the law.

It is hoped that this move will both reduce manufacturing costs to patent holders, whilst at the same time maximising the protection afforded to their rights. At the same time, this mechanism should ensure an easier and more certain way for competitors to ensure that they have access to current and up to date patent information.

Importantly, the Bill contains provisions which will allow the long-awaited Unitary European Patent system to be brought into effect in the UK. If the Unitary Patent system is finally adopted by (the majority of) EU Member States - it is making rather slower and less certain progress through the legislative passages of Europe than the IP Bill has in the UK - then it will mean that inventors (or their employers) will be able to apply for and secure a single patent which is enforceable in all signatory Member States (which will be all bar two or three of the EU countries) via a single process.

This is in contrast to the present system which requires a "bundle" of territorial patent applications to be specified by the applicant, so that the application must proceed through all of those jurisdictions' patent offices prior to grant, and it is hoped that it will be a more cost effective and clearer means for innovative businesses to secure patent protection across Europe.

There will also be a branch of the Unified patents court based in London where disputes concerning these new unitary rights can be litigated.

The Bill is expected to become law by early Summer 2014, and alongside other recent reforms to IP law and practice (such as the introduction of the Small Claims Track for some IP litigation, and reforms to copyright law around the Orphan Works being introduced as a result of the Enterprise and Regulatory Reform Act 2013) it is hoped that it will make the protection afforded by intellectual property law more accessible to SMEs, and more harmonised with equivalent systems across Europe.

Posted on: 03/02/2014

This article is for general guidance only. It provides useful information in a concise form. Action should not be taken without obtaining specific legal advice.

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