Major Reforms in IPR Act 2014 – UK
The Intellectual property Act 2014 with the major reforms in the Design and Patent law which has received the Royal Assent on 14th May 2014, will be in effect from 1st October 2014. The changes are made to modernise the intellectual property (IP) laws in order to help the UK businesses better protect their IP rights. This Act also implements reforms to the designs legislation which flow from the Hargreaves review of Intellectual Property and Growth in 2011. This article gives you the information’s about the changes made in the UK IPR Act which is in practice at present.
Changes to Design Law:
The existing design law is often considered convoluted and chaotic and small businesses, who don’t have the time or resources find very difficult to extricate it and it is expected to be unsuccessful in retaining their possession of Intellectual property rights. The IP Act 2014 introduces a number of new measures and make some changes to the law in order to make design law simpler, obvious and more robust to support the small business communities.
Unregistered Design Right:
In UK, the unregistered Design right renders you with the rights to prevent others to copy your design by infringing your rights. It protects the whole or part of an article, but does not give you the protection for 2D aspects such as surface decoration. The right arises automatically and last for either 10 years from the first marketing of an article made to that design or 15 years after the creation of the design whichever is earlier. This right doesn’t need to apply for registration.
Changes Made to Unregistered Design Rights
1. The designer will be considered as the first owner of the design.
In earlier version, the commissioner was deemed the owner. As per the New IPR Act 2014,
ü As an employer you continue to own the rights to any design your employees produce in the course of their job, unless their employment contract says otherwise.
ü As a self – employed designer or independent designer you will now own the design you create, unless there is a contract in place which says otherwise.
ü As a commissioner of designs you will now no longer own the design unless there is a contract in place with the designer which says otherwise.
2. The unregistered design definition has been altered.
ü As per IPR Act 2014, now the term “Design” is defined as the “Design of the shape or configuration of the whole or part of an article.
ü The definition used to incorporate “any aspect of the shape or configuration”. Now this has been removed making it less likely an action would be brought against you if your design appears to have copied a trivial part of someone else’s design or “a part of a part”. However, it remains an infringement to copy part of an unregistered design.
3. The definition of design has been clarified.
ü As per IPR Act 2014, to claim the design to be original, the design must not be common place in a “Qualifying Country”.
ü In UK, If you want to claim unregistered design rights in a design, that design must not be common place in the specific geographical regions of the UK, EU and some additional countries with reciprocal arrangements.
4. The definition of a qualifying person has been amended to “those who are economically active in the EU and other qualifying countries”
ü To qualify for UK design right protection, as the designer or the employer of a designer you must be:
· Be resident in the UK, or one of the other qualifying countries, as a matter of course, or
· Your company must have been formed in any of the qualifying countries AND do a substantial amount of business in any of the qualifying countries
ü If you do not meet the above mentioned criteria’s you may still be eligible if you meet certain other requirements.
5. New expectations to infringement of unregistered designs has been introduced.
ü Certain specific activities will no longer infringe unregistered design rights. They are:
· The Use for private, non-commercial, purposes
· The Use for experimental purposes
· The Use for teaching purposes, provided the use is fair, you quote the source of the design and you are not compromising the ability of the owner to exploit the design.
Registered Design Right:
As the name implies, you need to apply for the registration to claim the registered design right. The registered design right helps you to protect the appearance of the whole or a part of a product resulting from the features, in particular, the lines, colours, shapes, texture or materials of the product, contours or ornamentation. The sole owner of the registration has the exclusive right to exploit that design in the UK for up to 25 Years.
Changes Made to Registered Design Rights
1. The designer will be deemed the first owner of the design.
2. Intentional copying of a registered designs is now termed as a criminal offence
ü As per IPR Act 2014, the intentional copying of a UK or EU registered designs is now a criminal offence. This new changes brings the penalties into line with those who are in relation to copyright and trademark infringement.
ü The mode of infringement includes using, marketing, exporting, importing or stocking the design in the course of trade and the intentional copying of registered design without the permission of the owners will be a criminal offence and the penalty may be a fine or prison sentences.
3. New exceptions to infringement of copyright in registered design has been introduced.
ü IPR Act 2014 made an expansion to the already available UK registered Design rights to register community design introducing the exceptions to copyright infringements.
ü It reflects that an authorized user of a UK or registered community design will not infringe any copyright in the design.
4. Applicant does not need to be the owner of the design
ü Anyone can apply for the registered design even if you are not the owner of the design as per the International Property Act 2014. This removes the requirement for the applicant of a registered design right application to be the owner of the design.
5. New good faith exception to infringement
ü As per Intellectual property Act 2014, it allows the third party who, in good faith started to use a design prior to it being registered by another, to continue to do so. But only in a manner the third party is already been using it prior to the registration can continue using it.
6. International registration has been simplified
ü As per Intellectual property Act 2014, it grants the power for the secretary of State to implement the Geneva act of the Hague agreement in the UK.
ü Now you can seek protection for your design in UK via the Hague international registration system. Earlier you could obtain protection in UK only be selecting protection for the entire EU in the Hague international design registration system.
Changes to Design Law:
The IP Act 2014 introduces a number of changes to the patent law which simplifies complex areas and made it relatively low in cost and easier to use and defend patents. This new Act is beneficial for both the patent holders and the third parties too.
1. Marking Patent Products with a web address: displaying your rights
ü Intellectual property Act 2014 introduces an option called Webmarking by which the patented product can be marked with a website address instead of the Patent number and the country of the patent. The website address must direct you to a webpage that sets out the patent number(s) associated with that product.
ü Removing the need to mark the patent number directly on the product helps to reduce the burdens and costs for the businesses and individuals who own patents and also made it easy for the public to access up-to-date patent informations in relation to a product.
ü Choosing to mark is a useful strategy for the patent owners. Earlier, an infringer may not be able to avoid paying damages if they prove they were not aware of the patent, and had no reasonable grounds for supposing the patent existed, at the time of the infringement. However, if the product is market, the infringer cannot avoid paring damages in this way.
ü The patent owner will continue to have the option of marking their product with the relevant patent number based on their choice and also they will continue to have the option of not marking their products at all, and this will have the same consequences as now – reducing the likelihood that they will claim the damages from an infringer successfully.
2. Expansion of the patent opinion service:
ü Intellectual property Act 2014 expanded the patent opinion services on to provide opinions on a wide range of patent disputes. It will also provide opinions on supplementary protection certificates.
ü In addition, the intellectual property office will be able to start the process of revoking a patent if an opinion indicates is not new or inventive.
ü Earlier IPO can only issue opinions on the questions of (a) whether a patent is or would be infringed and (b) whether a patent is invalid because the invention is not novel or does not involve an inventive step. If an opinion considers that a patent is invalid, it is the responsibility of the third party to start revocation proceedings if necessary. This could be a costly and lengthy process.
3. Changes to Patents work Sharing:
ü Intellectual property Act 2014 introduces the measures that allows allow the Intellectual Property Office to share pre-publication patent information with other patent offices around the world.
ü It allows the IPO to send informations on unpublished patent applications to other national and regional patent offices. In practice, the IPO will only send informations on an unpublished UK Patent application when the patent applicant has filed an equivalent patent application at that other patent office inorder to reduce the duplication of examination work and to reduce the backlogs in the patent offices.
4. Minor changes in patent Legislation:
ü Intellectual property Act 2014 made some minor changes in the patent legislation to benefit the patentee’s. The minor changes are:
· Payment of renewel fees on restored European patents (UK). A “renewal” fee has to be paid annually to keep a patent in force in the UK. Currently, in one very rare situation where a European patent (UK) has been revoked and is later restored there is nothing in the legislation which requires the patent owner to pay UK renewal fees for the period when the patent was revoked.
· Change to the deadline for challenging patent ownership. The one who believes that they are the rightful owner of a patent owned by somebody else has two years form the date the patent granted to challenge its ownership, if they want to claim the legal remedies and get benefitted.
· Assertion of third party rights when an application is terminated. The patent application may get terminated if they don’t meet certain requirements, However in certain circumstances such application can be reinstated.
5. Patent Research Exception
ü Intellectual property Act 2014, brings the patent research exception order which clarifies that the activities relating to the medicinal product assessments are within the scope of the experimental use exception.
ü This changes allows companies to use patented products to carry out tests or other activities like to provide information such as clinical trial information to a regulatory authorities (Medicines & Healthcare products regulatory Authority) to assess whether medical product should be approved or for health technology assessments that are carried out by a government or public body 9national institutes of Health & Care Excellence) on whether a medicinal product should be used in the provision of healthcare.
ü This new order does not extend to any commercial activities such as sale, commercial supply or manufacture for sale or supply. A licence or a written consent from the patent owner is required to avoid infringement.
ü This changes meet the government commitment to ensure the IP system supports the life sciences sector.
The UK Intellectual property law 2014 brought in some changes in the design and the patent law to facilitate the Businesses to better protect their Intellectual property rights. It simplifies the complex areas and made in inexpensive to use and defend the patents. The new ordinances helps to reduce the duplication of the examination works carried out in the patent office in order to reduce the backlogs & strain in the patent systems and also issue the grant of patents to the business on time to avail their economic benefits. It also ensures that the new IP system supports the life science sector to continue their innovations and their contributions to the world.
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