Summary and implications

The Intellectual Property Bill (the Bill) was introduced into Parliament on 9 May 2013, and now awaits Royal Assent before becoming law in the UK. The Bill is intended to modernise aspects of UK intellectual property law, with a focus on designs and patents.

The Bill will:

  • simplify and strengthen design and patent protection in the UK;
  • clarify the existing intellectual property legal framework; and
  • harmonise the UK rules relating to designs and patents with the counterpart European laws in these areas.

In particular, the Bill introduces criminal penalties for the infringement of UK registered design rights. It also lays the groundwork for implementing the Agreement on a Unified Patent Court 2013 which will be central to introducing a single patent system in almost all EU countries. The Bill also introduces a designs opinion service from the UK IPO and an expanded patents opinion service.

Overall, the Bill has been largely welcomed, and the changes which it introduces will result in a clearer, more cost-effective and efficient intellectual property system, which will be more accessible to SMEs and easier for all businesses to understand.

Key features of the Bill

Designs

  • Makes infringement of a registered design a criminal offence: where unauthorised copying of the design is intentional and done in the course of business.
  • Introduces a voluntary, non-binding design opinions service: which will allow the IPO to provide the parties involved in potential design litigation with a non-binding opinion on the strength of their case. This will enable more disputes to be settled without the need for time-consuming and costly litigation.
  • Exempts certain acts from being considered an infringement of unregistered design: including private acts, acts for experiments or teaching.
  • Allows a third party to continue using a design which is later registered by someone else: where the third party is acting in good faith or where serious and effective preparations for the use of the design have been made before the other party's application for registration.
  • Rules on ownership of commissioned designs are changed: to make the first owner of a commissioned design in all cases the designer (not the commissioner), as is currently the case with Community designs, and whether or not the design is registered or unregistered.

Patents

  • Simplifies the ways in which public notice of patent rights is given: so owners no longer have to mark a patented product with the specific patent number. Instead, they can mark the product with a web address which details the relevant patent number(s).
  • Extends the scope of the Patent Opinions Service: so that the IPO can give non-binding opinions on a wider range of patent validity issues, and can revoke a clearly invalid patent in certain cases.
  • Allows the Secretary of State to bring the provisions of the Agreement on a Unified Patent Court 2013 into effect in the UK: the Unified Patent Court will have exclusive jurisdiction for litigation relating to European bundle patents and the new European Unitary Patent. The rulings of the court will have effect across all European countries in which the relevant patent has been validated.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.