*Legal Changes from 1 October 2014*
The law is ever-changing to meet the demands of modern society. As of yesterday, several changes officially took effect in the law concerning patents and designs, based on the Intellectual Property Act 2014 and the Legislative Reform (Patents) Order 2014. The changes are intended to clarify the system for small- and medium-sized enterprises, as well as strengthen design protection within the UK, amongst other things. The most interesting change is that it is now a criminal offence to knowingly copy a registered design without the owner’s consent.
Perhaps the most useful change is to enable patent marking through a web page. This change is very welcome and brings the UK closer to line with the US. The idea is that it is easier to update a web page than to change numbers on printed packaging. You also need to watch out for ownership issues when commissioning designs. A contract must be in place for future designs to ensure that ownership passes away from the designers to the commissioners. I’m not convinced that this is progress, but it is in harmony with Copyright law, where a signed assignment of rights is essential for a transfer to be effective. These changes could well affect you, or your business, so read on for a brief overview of the changes.
Patents
a) Marking a product as patented – another useful option on the table
You can now choose to display the address of an internet website on your patented product, instead of the number and country pertaining to the patent. Note that:
- The address must correspond to a webpage with the relevant patent number(s) for that product.
- In order to benefit from this approach, the webpage should be kept up-to-date with the relevant patent information. This is to reduce the likelihood of a potential infringer from successfully proving that they were unaware of the patent(s).
b) Assessing medicinal products – researchers rejoice
The scope of the ‘research exception’ has been broadened slightly, and now allows a patented product to be used in activities for the assessment of medicinal products. Note that:
- This applies where the assessment (such as a clinical trial) provides information to a regulatory authority or for a health technology assessment, including comparative assessments.
- It does not cover use of a patented product for commercial activities – this would still count as infringement.
c) Patent Opinions service – what do you think?
The UK IPO is expanding the range of its service providing opinions on infringement and validity of patents, including Supplementary Protection Certificates (SPCs). Note that:
- The IPO will be able to start revocation proceedings of its own volition following issued opinions which are definitive on the lack of novelty/inventive step (but will allow the relevant proprietor(s) the opportunity to respond first).
d) Other minor changes
- The deadline for challenging patent ownership has been extended by one day.
- Third party rights whilst a terminated application can still be revived have been clarified.
- The UK IPO will be able to share information on unpublished patent applications with other Intellectual Property Offices (in certain circumstances), with the purpose of reducing duplication of work carried out.
Designs
a) Ownership of a design – who is the owner?
The person who creates a design is now considered the owner, as opposed to the person who commissions the design. Note that:
- This applies only if a contract between the relevant parties does not state otherwise.
- This applies only to designs created on or after 1st October 2014.
b) Intentional copying of a registered design – can you or can’t you?
Copying a registered design (or using one commercially) is now a criminal offence, if the following points apply:
- The act of copying/use was intentional and conducted without the permission of the owner of the design.
- The act of copying/use was done whilst knowing (or having reasonable grounds to believe) that the design was registered.
It is important to note that;
- Accidental and incidental use are not classified as criminal offences.
- Copying a design before it is registered is not a criminal offence under these changes.
- The change to the law is not applied retrospectively – copying of a registered design before 1st October 2014 is not within the scope of the changes.
- Protection for unregistered designs in this respect has not been reduced by these changes (but see below).
c) Other changes (non-exhaustive)
- Unregistered design rights definition have been clarified – ‘part of a part’ of an unregistered design is no longer necessarily protected, such that if a trivial part of a design is copied, it may no longer constitute infringement.
- Eligibility requirements for who may claim unregistered design rights have changed.
- Several specific circumstances for non-infringement of an unregistered design right are now listed (such as for educational or experimental use).