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Brief Overview – Intellectual Property Act 2014

The Intellectual Property Act 2014 aims to modernise the UK’s intellectual property (IP) law in order to simplify and strengthen the UK IP system and improve efficiency. Many of the provisions in the Act will come into force on 1 October 2014.

DESIGNS

Below is a brief summary of the changes brought in by the Act which relate to Designs.

1) For commissioned designs, the designer, not the commissioner, will be the owner of the design.

2) The law on who may own a UK unregistered design right has been extended.

3) Certain acts, such as non-commercial acts done privately, acts done for experimental purposes or for teaching purposes are exempt from being an infringement of an unregistered design.

4) Those who use, with permission, a registered Community design (which is valid in the UK) cannot be sued for infringement of associated copyright.

5) Third parties who start to use a design, will be able to continue to use the design and will not liable for infringement, if the design is subsequently registered by someone else, provided that the design is only used for the same original purpose.

6) Intentional copying of a UK or EU registered design will be a criminal offence.

7) The UK will be allowed to join the Hague international design registration system so that applicants will be able to specify relevant EU territories rather than all EU territories (NOT coming into force on 1 October 2014).

8) Applicants will be able to choose between appealing an unfavourable IPO decision to the courts or to an “Appointed Person” (NOT coming into force on 1 October 2014).

9) A voluntary, non-binding Design Opinions Service will be introduced to allow users to ask for an impartial non-binding opinion on matters relating to designs (NOT coming into force on 1 October 2014.

PATENTS

Below is a brief summary of the changes brought in by the Act which relate to Patents.

1) Patent owners will be allowed to provide public notice of their patent by marking a patented product with a web address which clearly associates the patent number with the product.

2) The IPO will be allowed to provide non-binding opinions on a wider range of issues and will also have the power to revoke clearly invalid patents. The issues for which a non-binding opinion will be available are:

a. whether a particular act constitutes an infringement of a patent or a Supplementary Protection Certificate (SPC);

b. whether the invention is new and/or involves an inventive step;

c. whether the invention is capable of industrial application;

d. whether the invention relates to excluded matter;

e. whether the specification of the patent is clear;

f. whether the specification of the patent extends beyond the application as filed;

g. whether an SPC is valid.

3) The IPO will be allowed to share information on unpublished patent applications with other national and regional patent offices.

4) The Unified Patent Court Agreement, once finalised, can now be brought into effect in the UK by order of the Secretary of State (NOT coming into force on 1 October 2014).

For a more detailed understanding of these changes please see the full text at http://www.legislation.gov.uk/ukpga/2014/18/contents/enacted or contact us.