Major reforms in the IP world today (and still more to come…)
Today is a BIG DAY in the world of IP! Major reforms afoot! Please click here for an IPO press release.
Intellectual Property Act 2014 (IPA 2014)
Changes to design and patent law: implementation of a number of design and patent provisions in the IPA 2014 (which amends mostly the Registered Designs Act 1949, the Patents Act 1977 and the Copyright, Designs and Patents Act 1988) come into force today, including:
- An amended definition of UDR – (a) removal of ‘any aspect’ of the shape or configuration of designs from scope of protection (to limit protection for trivial parts); and (b) extension of definition of commonplace to “commonplace in any qualifying country” (so for a design to be original, it must not be commonplace anywhere in the UK, the EU or a number of additional countries which have specific arrangements with the UK).
- Changes to the initial ownership of UK designs (UDR and registered) so that the designer will be the first owner, not the commissioner – in line with EU law (N.B. if the designer is an employee, and the design was created under the terms of an employment contract, the employer will own the rights).
- Simplification of the qualification rules based on residence, or connection with a qualifying country and first marketing, making it easier to benefit from UK unregistered design rights.
- New exceptions to infringement of UDR for private acts, experiments and teaching.
- Rights of prior use – new limited defence for businesses that have designed and started commercialising a design, or have made serious and effective preparations to do so, but later find that it has subsequently been registered by another party (this scenario can arise because EU law allows a 12 month grace period to test a product before registration).
- Financial remedies for innocent infringement – previously only available for unintentional infringement of a Community design – now also applies to UK designs. A UK registered designer will now be able to seek an account of profits from an innocent infringement, but not any wider form of financial damages.
- It will be a criminal offence to intentionally copy a UK or Community registered design, or to produce a design with only slight immaterial changes N.B. this offence will not be extended to unregistered designs.
- New exception to ensure that anybody who uses a registered Community design with the permission of the owner will not infringe the associated copyright, as is already the case with UK registered designs.
- Patent owners will now be able to mark products with internet links to put others on notice of their rights.
- Expansion of the patents opinions service: the limited grounds on which the IPO is able to give an opinion will now be replaced with a broader power to set out those grounds. This will enable the grounds to be amended more easily in response to the demands of the users of the service. Opinions can also now be requested on the validity or infringement of a Supplementary Protection Certificate. The Comptroller-General will also now be able to revoke a patent on his own initiative if an opinion concludes that a patent is invalid because the invention covered by the patent was either known or was obvious. This new power should only be exercised in the clearest of cases, where it is indisputable that the patented invention lacks novelty or an inventive step.
- The UK will now be able to implement the Agreement on a Unified Patent Court.
- The IPO will now be allowed to share certain information on unpublished patent applications with other national and regional patent offices in the hope of improving international cooperation and reduce huge backlogs.
See here for our previous newsflash on this.
Three new copyright exceptions (which will be inserted into the CDPA 1988) come into force today:
(i) Private copying – limited to the making of personal copies for private use, such as allowing someone to copy a CD they have bought onto an iPad;
(ii) Parody caricature and pastiche – the copying must be framed within the constraints of the ‘fair dealing’ exception – use of an entire spoof video will not be acceptable; and
(iii) Quotation – previously, UK copyright law has only allowed the use of quotations for the sole purpose of “criticism or review”. The changes will permit any type of fair and honest quotation for purposes which include, but are not limited to, criticism or review, providing the source of the quotation is clearly acknowledged and that the original work has been previously made available to the public.
See here for our previous SnIPpets blog on this.
Collective Extended Licensing scheme
The Copyright and Rights in Performances (Extended Collective Licensing) Regulations 2014 come into force today. These set out the authorisation scheme for a collecting society that wishes to operate an extended collective licensing (ECL) scheme. This is another measure the Government is introducing to simplify the licensing system.
ECL is a type of licensing that allows an authorised collecting society to extend an existing collective licence so that it can license on behalf of all rights holders in the sector, except those who opt out. Traditional collective licensing relies on rights holders opting in by giving the collecting society express permission to license their works, but the ECL assumes that rights holders want their works to be licensed, unless they opt out.
OHIM will begin examining the classification of international registrations designated in the EU, for vague terms (following the IP Translator case):
- All terms considered too broad or too vague, and lacking clarity and precision will be objected to.
- This change brings OHIM’s practice into line with that of EU national and regional IP offices.
- The change in practice will affect all International Registrations designating the EU notified by WIPO to the OHIM on or after the 1 October 2014.
Click here for OHIM’s press release.
The new UK ‘Bolar Exemption’ comes into force today, allowing pharmaceutical companies to use a patented product when carrying out clinical trials, without fear of infringing. There had been some serious concerns in the pharmaceutical industry that some clinical trials with innovative drugs would lead to legal action. It is hoped that pharmaceutical companies, especially research-based companies, will now conduct more research in the UK by relying on this exemption. The UK exemption will stand alongside the existing Bolar exemption under the EU directive 2001/83/EC (as amended) which only protected generic drug companies from the risk of infringement claims if they conducted trials on a patented product. The relevant legislation in the UK is The Legislative Reform (Patents) Order 2014 which amends section 60 of the Patents Act.
Still more to come…
An orphan work is one where one or more rights holders are unknown or cannot be located. The UK Government has powers under the Enterprise and Regulatory Reform Act 2013 to enable licensing of copyright works in the UK where the rights holder cannot be located. Therefore, the Government is introducing a scheme to license orphan works in the UK for both commercial and non-commercial use.
The orphan works licensing scheme will be in place from 29 October 2014 (click here for IPO fact sheet) and at the same time, the Orphan Works Directive will be transposed into English law (The Copyright and Rights in Performances (Licensing of Orphan Works) Regulations 2014 introduces the orphan work licensing scheme and The Copyright and Rights in Performances (Certain Permitted Uses of Orphan Works) Regulations 2014 transposes the Orphan Works Directive (2012/28/EU) into English law).
Further implementations of the Intellectual Property Act 2014
The following design provisions require secondary legislation and are likely to be brought fully into effect some time in 2015:
- A new international design registration system (the Hague system) – this will allow designers to register their designs across as many or as few member states as they like, with just one application and one fee. This is analogous to the international trade mark registration system under the Madrid Protocol. The system should significantly reduce costs for businesses wishing to register designs in multiple territories; and
- The creation of a new non-binding opinions service for designs – this will be a voluntary, low-cost, non-binding and impartial opinions service on issues such as whether a design is valid, whether a design is infringed or is being infringed and even issues relating to design ownership. This will be similar to the well-regarded Patent Opinions Service. It is hoped this service will assist any decision-making before embarking on formal legal action, or will limit or focus any litigation that does ensue. This service will not cover unregistered designs but may be extended to cover them in the future.
We will keep you updated on these legal developments.