UK: The IP Act: A False Economy?

Last Updated: 27 October 2014
Article by Chloe Grover and Mark Abthorpe

The IP Bill recently received Royal Assent and became the IP Act 2014 ("the Act"). This article summarises the most significant changes to UK law relating to both patents and designs brought about by provisions in the Act that will start to come into force from 1st October 2014.

The Act is part of wider reforms intended to support innovation and add a headline-grabbing figure of up to £8 billion to the size of the UK economy by 2020. It is intended to make the UK IP system clearer, more cost-effective and more accessible, particularly to small and medium-sized enterprises (SMEs).


Unified Patent Court and Unitary Patent

The Act enables the UK to bring into effect the Unified Patent Court, the forum for enforcing the long-awaited Unitary Patent. The Unitary Patent system will offer UK businesses significant efficiency gains when protecting their inventions by allowing them to:

  • secure a single patent valid in 25 EU countries with projected savings in translation costs of up to £20,000 per patent; and
  • enforce that patent at the Unified Patent Court, rather than in a series of national courts.

However, these tempting cost-saving measures come with the risk of the EU-wide loss of the patent if a counter claim for revocation is successful. It therefore remains to be seen when the Unitary Patent finally becomes reality whether businesses will take up the benefits it offers, particularly for their most commercially significant inventions.

Product marking

Businesses will now be allowed to identify their patented products by simply providing a web address on those products, rather than a potential myriad of relevant patent or patent application numbers. This common-sense measure will reduce the cost burden on patent holders in updating manufacturing processes for marking products and packaging in response to changes in patent status. It will also allow third parties to easily access up-to-date patent information for a given product.

Patent Opinions Service

The Act extends the scope of the Patent Opinions Service, including bringing supplementary protection certificates within its remit. Potentially of more significance, particularly to SMEs, is that in very clear-cut cases where an opinion prepared by the Patent Opinions Service reveals that a patent is not new and inventive the Act empowers the UK Intellectual Property Office (IPO) to revoke the patent.

This provision is intended to reduce the cost burden on third parties of bringing revocation proceedings. It should also remove invalid monopolies in the UK, giving businesses more freedom to innovate. Patent owners are nevertheless assured that the IPO is obliged to provide an opportunity for them to file observations and/or amendments to save their patent from revocation.


Protection for registered designs

In recognition of the importance of designs to the UK economy, the Act makes infringement of a registered design a criminal offence in certain circumstances. This brings the sanctions available for owners of registered designs into line with those currently available for owners of copyright and trade marks. Those who have deliberately copied a registered design may be punishable by a fine and/or a prison sentence of up to ten years.

Safeguards have been included to ensure that the new criminal penalties extend only to those who have blatantly copied a registered design. However, innocent infringers have not escaped the attention of the legislator and may now be pursued for an account of profits (although damages remain unavailable), bringing consistency with the remedies available for infringement of registered community designs.


The Act brings the UK position on ownership of commissioned designs into line with EU law and copyright legislation: the default owner of a design will now be its designer, not its commissioner. However, the provisions relating to employer ownership of designs created by their employees in the course of their employment remain unchanged. Businesses commissioning designers should take care to ensure that written agreements dealing with the ownership of the resultant designs are in place before work commences.

Other changes to registered and unregistered designs

A number of other changes have been made to design law to reflect existing measures in the Patents Act, harmonise with EU law and provide legal certainty for businesses. These measures include the following:

  • The coverage of an unregistered design right has been simplified and tightened to clarify what is protected to both designers and third parties.
  • Third parties acting in good faith will be able to continue to use a design that is subsequently registered by someone else, without fear of being stopped as a result of the registration.
  • UK businesses seeking to use the Hague System for the International Registration of Industrial Designs will now be able to specify the individual EU territories in which they want their designs protected.

Finally, a new Design Opinions Service will be introduced to help parties resolve disputes by obtaining an impartial opinion on the strength of their position without resorting to costly litigation.


The new measures sit alongside initiatives such as the Patent Box as part of a number of government efforts designed to benefit businesses that use the UK IP system. However, it is not yet apparent whether IP owners will take up the opportunities offered, for instance by favouring the cost savings offered by Unitary Patent over the lower-risk currently available patent systems. It is also interesting that the Act focusses on upgrading the law relating to registered designs, an area of protection often overlooked by many IP owners as being of lower value than patent rights.

It therefore remains questionable whether these measures will contribute towards the ambitious targets for economic growth being met, although the efforts to increase accessibility to and reduce complexity of the IP system must be a step in the right direction.

Need advice?

Carpmaels & Ransford LLP is a leading firm of European patent and trade mark attorneys based in London. For more information about our firm and our practice, please visit our website at

This Briefing Note was first published in the IAM IP Newsletter.

Originally published on Mondaq in July 2014

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.

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