The IP Bill, in addition to making provisions for the unitary patent, also introduces a number of changes to UK design law relating to infringement and ownership of registered and unregistered designs. We outline a few of the more significant changes below.
The IP Bill will introduce a criminal offence for unauthorised copying of a registered design, provided that the copying was done deliberately and in the course of business. These provisions have been quite controversial but have been watered down to cover only intentional copying. Nevertheless, businesses will need to take greater care to avoid any risk of an accusation of copying.
The IP Bill will introduce a new “Design Opinions Service” to provide a low cost, non-binding and impartial view on potential design disputes. The Design Opinions Service will review disputes relating to, for example, infringement of a design or ownership of a design right and provide a non-binding “opinion”. An opinion can also be obtained on potential disputes, such as whether your design is likely to infringe upon someone else’s design, or whether an unregistered design right exists for a product. The service is intended to help parties resolve disputes before costly legal action is pursued and could help to reach a settlement.
The Design Opinions Service is modelled on a corresponding service for patents which has been regarded as quite successful. However, since the UK IPO has not been conducting substantive examination of designs for many years, it is not clear to us that they have examiners with relevant experience.
Currently, the definition of an unregistered design includes “any aspect” of a design (e.g. a small cropped area of a design). The IP Bill will remove the words “any aspect” so that the definition of an unregistered design will cover “the design of the shape and configuration of the whole or part of an article”. This change is intended to make it clearer to third parties as to what is covered by the unregistered design right and to (in the words of the UK IPO) “limit the protection for trivial features of designs”.
Unregistered design right has often proven a useful backup to a claim for infringement of a registered design due to the effective ability to choose the scope of a design after the fact. See for example Sealed Air v Sharp Interpack (2013), where our client successfully enforced unregistered design rights although the infringement was held to be sufficiently different than the registered designs. It is not clear what effect the deletion of “any aspect” will actually have in practice.
The UK is currently only a member of the Hague international design registration system by virtue of EU membership. The IP Bill will enable the UK to join the Hague system in its own right, making it possible register a design in the UK through the Hague system without having to register in the whole of the EU.
The IP Bill will introduce new exceptions to the law to allow third parties to use unregistered designs for private use, experimental purposes and teaching. Commercial use will still require the permission of the rights holder.
The IP Bill will change the default owner of a design to be the designer, not the person who commissions the design. This change will bring UK law in line with EU law. If ownership of a design is intended to be given to someone who isn’t the designer, it is important that a contract transferring the rights to the intended owner is in place.
02 April 2014