The new Intellectual Property Act 2014 - guidance for designers and those commissioning designs

The new Intellectual Property Act 2014 - guidance for designers and those commissioning designs

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Author: Laura Harper

The Intellectual Property Act 2014 (the act) received royal assent on 14 May 2014. The act will come into force between October 2014 and the end of 2015.

Stemming from the Hargreaves Review on intellectual property reform, the act seeks to modernise and simplify certain aspects of intellectual property law including the law relating to designs, in order to promote innovation.

Consequently, if product design, 3D Printing, fashion design, furniture or jewellery design are relevant to your business then these changes will be relevant to you.

What do design rights protect?

UK Unregistered Design Right protects the internal or external shape or configuration of an original design. This right will give you protection in the UK for a period equal to the earlier of: 10 years from the first marketing of articles produced from the design; or 15 years from the date of creation of the design. It should be noted however, that during the last 5 years of this protection period the design is subject to a licence of right entitling a third party to be granted a licence to make and sell products copying the design.

If however a design is registered as a UK Registered Design, the proprietor of the registration has the exclusive right in the UK to exploit that design for a period of up to 25 years. The registration will need to be renewed every 5 years. Registered designs protect: two-dimensional designs or surface patterns; and the shape and configuration of an original design.

Typically design right protects commercially produced designs and not 'artistic' designs which will generally attract copyright protection.

What are the purposes of the changes to design rights?

The purpose of the design right changes are to:

  • simplify design law and allow the intellectual property framework to better support innovation
  • improve the enforcement of designs and understanding the design rights of others, and
  • improve the processes associated with the design framework

What changes are made to design right protection?

Unregistered Designs

  • Designer is now the first owner: One fundamental change to existing law is that the act changes the deemed first owner of unregistered designs so that unless otherwise agreed, the designer will be the owner of the designs and not the person who commissioned the designs. Historically the first owner has been the commissioner. This amendment will bring design law into line with UK copyright law
  • Trivial design features limited: The definition of Unregistered Design Right has been amended to limit the protection for trivial features of a design
  • Clarification of definition of 'design': The act clarifies the definition of design so that to be original a design must not be commonplace in a 'qualifying country' rather than in the 'relevant design field', which caused confusion as to its geographical coverage. Qualifying Country is defined in the Copyright Designs and Patents Act 1988 (CDPA)
  • Qualifying Person amended: The act has amended the provisions related to qualifying persons who can claim unregistered design right so that those who are economically active in the EU and other Qualifying Countries (as set out in the CDPA) have protection
  • New exceptions to infringement: The act extends the exceptions for infringing unregistered designs, so that acts done privately for no commercial purpose or for teaching will not infringe unregistered design rights. A similar exception applies for acts done for experimental purposes, this is to encourage innovation

Registered Designs

  • Designer is now the first owner: The initial ownership position in respect of registered designs is also changed, as for unregistered designs i.e. the designer will be the initial owner unless otherwise agreed, rather than the commissioner.
  • New Criminal Offence: The act makes intentional copying of a registered design a criminal offence. This applies to acts which take place in the course of business and the penalties for such an offence are now a fine or prison sentence. Again, this brings the penalties into line with sanctions for trade marks and copyright infringement.
  • New exceptions to infringement: The act expands the exception from copyright infringement already available to registered UK designs to registered community designs, i.e. so that an authorised user of a UK or registered community design cannot be sued for infringement of associated copyright.
  • Applicant does not need to be the owner of the design: The act removes the requirement for the applicant of a registered design application to be the proprietor of the design.
  • New good faith exception to infringement: The act introduces a right of prior use, allowing a third party who has acted in good faith to continue to use a registered design which is subsequently registered by another. The aim of this amendment is to provide an entitlement to limited exploitation in respect of uses already made.
  • New powers of enforcement: The act gives Trading Standards officers similar powers of enforcement for design offences as those already available to them in respect of copyright and trade marks.
  • Simplified international registration: The act grants power for the Secretary of State to implement the Geneva Act of the Hague Agreement in the UK, this means that international registration procedures will be available for UK registered designs. At present UK designers can only access the Hague registration process via the EU community design registration.
  • Harmonisation of financial liability: The act aligns the financial liability provisions for innocent infringement with those provisions under the Community Design Rights legislation.
  • Simplified appeal process: The act allows a new route of appeal against Intellectual Property Office (IPO) decisions via an Appointed Person instead of appealing via the courts, such root already exist for trade mark appeals. This amendment is intended to allow appeals be cheaper and less time consuming.
  • New opinions service for ownership, validity and infringement issues: The act provides for a voluntary non-binding opinion service to be introduced by the IPO which is similar to the opinions service which currently exists in respect of patents.
  • Clarification: The act clarifies that proceedings for an offence committed against a partnership must be brought against the partnership.

What are the other changes?

  • The act has added a new exemption to the Freedom of Information Act for information obtained in the course of or derived from a continuing programme of research, a report of which is intended for future publication, where disclosure would prejudice the report.
  • There is an obligation on the secretary of state to report on the IPO's activities each year to show how innovation and growth have been supported in the UK.
  • The act provides for automatic extension of certain copyright provisions of the CDPA to materials of, and works first published in other countries i.e. it recognises certain foreign works.

How will these changes affect me?

It is hoped that the act will benefit many UK businesses and design professionals and make obtaining international registrations easier. If you are a designer or design company you should be aware of the implications of the new act to your business. If you are commissioning a design, it is important to ensure that you have an appropriate agreement in place with the designer to ensure that the design rights are owned by you. We recommend that you review your standard terms and conditions and, where necessary, amend them to ensure that appropriate provisions are included.

If you would like to find out more about design rights and the new act or if you need any help with the agreements which relate to the commissioning or commercial exploitation of designs, please do get in touch.

About the Author

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Laura Harper

Partner

03700 86 5881

Laura is an experienced intellectual property lawyer. She helps businesses and professionals, reliant upon the intellectual property which they produce, to protect and commercialise their products and services. She is a leading professional advisor to businesses in the creative industries and digital sectors.

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