6 November 2014 10 min read

On 1st October 2014 the new Intellectual Property Act (IPA) came into effect, laying the foundations for some fairly radical changes in the IP world; particularly in the area of patents and also the area of designs, both registered and unregistered. This blog post takes a look at the changes to patent law which have come into effect, or will soon be coming into effect, as a result of the IPA.

The unified patent court

The most important provision of the IPA is that it provides the framework for the setting up of the Unified Patent Court in the UK. The Unified Patent Court (or UPC for short) is an idea developed at the EU which would see 25 European Countries including the UK and all EU states (with the exception of Spain, Poland and Croatia) share a common patent court. The Court will operate from Paris, Munich and, of course, London – though it’s likely that smaller ‘regional courts’ will open in other states if the implementation of the UPC is successful.

At this point, you may well be asking yourself how, if it all, this will affect your existing or prospective patents. The answer, quite simply, is that for the moment, it won’t. But it’s not time to sit down and relax just yet as big changes are most certainly on the horizon. With advances in technology opening up the global marketplace like never before, national patent frameworks are likely to become redundant in the coming decades and possibly even years; being replaced with regional systems. Of course, this is nothing to be concerned about, indeed it is likely to benefit many businesses, particularly those with patents that trade in several countries across Europe. And for those businesses with patents that only trade in the UK, don’t worry – while the changes are likely to bring additional benefits for European patent holders, there don’t appear to be any negative consequences for UK patent-holders; though we’ll keep you posted if anything changes.

More changes

There are, of course, other changes to patents implemented by the new IPA. Many of these are rather technical, and so at the risk of boring you, we’ll leave those out for now (though we’d be happy to discuss them with you if you’d like further details – just drop us a line!).

The main changes you should be aware of are that there are new powers for the UK Intellectual Property Office (UKIPO) to revoke patents in cases where the patent is not deemed to meet the required threshold for ‘novelty’ or is too ‘obvious’. In practice, however, it remains to be seen whether the UKIPO will use these additional powers and if so, to what extent they will be used.

Moving into the 21st century…

If you thought it was all sounding like ‘doom and gloom’ bear with me, there is a handy provision contained in the new law. The New IPA provides that patent holders no longer need to put the patent number on to a product to indicate that it’s patented; instead you can simply put a web link in place of the patent number. Admittedly, once you take away all the IP lawyers, the number of people clicking on that link aren’t going to be in the millions, but still, it’s extra traffic for your website and that traffic could certainly yield a few new clients. Worth thinking about then!

Go directly to jail…

Probably the most ground-breaking provision of the IPA is that it makes infringement of Registered Designs both a criminal and a civil matter. Previously infringement was only a civil matter, where penalties could only be financial in nature (ie – being sued for damages). Now, however, as well as being sued for damages, the person infringing may find themselves criminally liable and facing a potential prison sentence of up to 10 years.

Of course, as you would expect, to be convicted of the criminal offence there is a fairly high threshold to meet. So, for example, the offence only applies to those who copy the design exactly (or almost exactly) and, crucially, those who copy the design intentionally and in the knowledge that the design is already registered and therefore subject to protection. On the whole, this is a very high bar and so any infringement would have to be quite blatant to fall under this.

It is also worth noting that this provision applies equally to both UK and EU Community Registered Designs.

Overall, this change to design law is, in theory, a positive change for businesses; ensuring greater protection by deterring would-be infringers with the added threat of prison, in addition to be sued. However, until the first prosecution has been brought, it is difficult to assess whether these new provisions will have any substantial effect in practice.

Commissioning designs…Who owns it?

Since Unregistered Designs were introduced in 1989 the usual presumption was that the design was owned by the commissioning business unless a contract (or other agreement) stipulated otherwise. However, the IPA now sees the presumption working the other way. So in the absence of a clear contractual agreement, the presumption will be that the design belongs to the designer unless the commissioning business can prove by way of a clear agreement that the design belongs to them. It’s important to note that, with a few exceptions, this provision applies not just to Unregistered Designs but also to Registered Designs and certain types of Copyright.

It’s also important to realise though, that this is likely to have a minimal effect on most businesses. This is due to the fact that most ownership / assignment issues are addressed in contract prior to commissioning of the work. However, for businesses foolish enough not to address this issue explicitly prior to commissioning the work, they could find themselves in a tricky position.

Overall then, the IPA changes in respect of ownership shouldn’t present a big problem for businesses commissioning designs but it does reinforce the fact that potential problems can be avoided in the first instance by having a well-drafted contract in place prior to commissioning the design. It’s simply a case of thinking ahead.

Other provisions of the IPA

There are a number of other small changes in terms of formalities, definitions and defences however the impact of these changes are minimal and are unlikely to have a significant impact on the vast majority of businesses.

In summary…

Overall then, the IPA (as far as patents are concerned) is a bit of a mixed bag. New rules have come into force which will restrict copycat patents – bad news for those looking to make a quick buck with a knock-off but great news for those developing genuinely new products and processes. The new provisions allowing patent holders to swap the age-old patent number for a web link shows a shift towards patents being brought into the 21st century and finally, the creation of the Unified Patent Court shows, unsurprisingly, that regional patents are set to render national patents largely superfluous in the not too distant future. While the new Act itself doesn’t make any radical changes, it has certainly set the stage for big changes to occur soon. Watch this space…

If you’re an existing patent-holder or a prospective patent-holder and you’d like to discuss how to make the most of your patent, do get in touch with us and we’ll be happy to advise you on how to make the most of your intellectual property.

The contents of this article are intended solely for information purposes only and should not be construed as legal advice or financial advice or opinion in any specific facts or circumstances.

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Ryan Lisk

Ryan has helped a vast number of businesses protect and control their intellectual property as well as drafting and advising on consumer and commercial contracts.

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